Patrick T. Michael

Michael spends much of his time helping his clients escape from Texas. In his spare time, he helps young refugees stay there.

“People are trying to get out of Texas, which is known as a patent plaintiff-friendly venue,” said the San Francisco-based partner with Jones Day.

Specifically the Eastern District of Texas, headquartered in Tyler. Take Xilinx Inc., a San Jose-based maker of programmable circuits whom Michael has represented in multiple cases. In January 2017, a Japanese patent fund IP Bridge 1 sued Xilinx in Texas over two patents. Godo Kaisha IP Bridge 1 v. Xilinx Inc., 17-CV00100 (E.D. Tex., filed Jan. 31, 2017).

Michael quickly opened up a new front in the venue preferred by many Silicon Valley technology companies, the Northern District of California. He challenged 12 patents held by IP Bridge, and also won a bid to move the original Texas case to California. Xilinx Inc. v. Godo Kaisha IP Bridge 1, 17-CV00509 (N.D. Cal., filed Feb. 1, 2017). In June, Godo Kaisha agreed to a covenant not sue for infringement on those patents.

But venue battles are just part of what makes patent law such a fast-changing business, Michael said. A recent set of federal court rulings has made it easier for defense attorneys to argue a patent was granted on an overly abstract idea or that the patent holder did not actually move the technology forward.

Such factors came up in another recent case, Papst Licensing GbmH & Co. KG v. Xilinx Inc., 16-CV00925 4963 (N.D. Cal., filed Feb 26, 2016). The German company original sued in Delaware — another common federal venue for patent cases — but Michael and his team were able to get the case transferred. U.S. District Judge Lucy Koh of San Jose ruled the Papst’s claims were not patentable.

“Court decisions determining that patents had unpatentable subject matter were becoming more frequent,” Michael said. The dispute resolved in April 2017 following a U.S. Court of Appeals for the Federal Circuit in favor of Xilinx.

Michael is also active with Jones Day’s pro bono practice, which is largely dedicated to helping asylum seekers. The company’s Project Laredo effort currently represents about 100 women and children being held at the immigration lockup in Laredo, Texas. He is representing a teenage girl from Central America being held in San Francisco.

“The reality is we have a humanitarian crisis and a flood of refugees,” Michael said. “These pro bono efforts are part of our commitment to the rule of law.”

— Malcolm Maclachlan