Michael Jay

Michael D. Jay specializes in patent and trade secret litigation as a partner at DLA Piper US. In addition to his JD, he has a bachelor’s degree in neurobiology from UC Berkeley.

Clients include Motorola Mobility LLC, Disney Streaming Services LLC, TeamViewer Germany GmbH, Lenovo Group Ltd., Honeywell International Inc., Microsoft Corp., Apple Inc. and The Hewlett-Packard Co.

“We’ve seen a tremendous uptick in business and our group has been hiring,” Jay said. “We do a lot of work for handset manufacturers, and they’re a huge target because they are big revenue drivers. Folks see the ITC as a way to gain leverage in these cases because they seek exclusion orders that can cause extensive harm and can be used as leverage in settlement negotiations.”

For client Motorola, Jay co-led the DLA Piper team that successfully conducted an ITC investigation and its companion district court action in which Motorola’s smartphones were accused of infringing a long-term evolution patent declared essential to the 4G wireless standard. Certain LTE-Compliant Cellular Communication Devices, 337-TA-1253 (U.S. ITC, filed March 8, 2021).

Jay was Motorola’s litigator of choice because he’d won a similar case for a different client against the same plaintiff, Evolved Wireless LLC, three years prior to the current case.

“A selling point was that we’d had significant success before,” Jay said. Seeing another loss on the horizon, he added, Evolved withdrew the claim a month before the ITC hearing and dismissed the district court case soon thereafter. “We were able to use the tactics of the former case to poke holes in Evolved’s arguments in the current case. It was very satisfying.”

Jay is lead counsel on the team representing Disney and Hulu in a suit by a frequent plaintiff, WAG Acquisition LLC, over patents on streaming content on the internet. The case, in which the Patent Trial and Appeal Board has instituted IPRs for each of the three patents at issue, is notable because it is the first major patent litigation against the Disney Plus service since it launched in 2019. WAG Acquisition LLC v. Disney Streaming Services LLC, et al., 2:21-cv-8230 (C.D. Cal. Filed Oct. 18, 2021).

“Once Disney became a new player in the market, plaintiffs started viewing it as a target,” Jay said. “By getting IPRs instituted against all the patents, we saved our client time and money.”

Jay was one of the leads for client Honeywell in worldwide patent litigation over barcode scanners involving one of its toughest competitors, Zebra Technologies. The parties reached a global settlement, with Zebra paying Honeywell $360 million. Certain Barcode Scanners, Mobile Computers with Barcode Scanning Capabilities, Scan Engines, and Components Thereof, 337-TA-132 (ITC, filed May 20, 2022).

“A coordinated global effort by us and a huge success,” Jay said.

— John Roemer