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Michael J. Malecek

Michael J. Malecek
Partner, Co-chair, Intellectual Property Department
michael.malecek@kayescholer.com

Silicon Valley
T: +1 650 319 4508

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Michael J. Malecek is Co-Chair of the Intellectual Property Department and a member of the White Collar Litigation and Internal Investigations practice. Mike represents some of the leading biotech and technology companies in the US, including Google, Sequenom, Affymetrix, Complete Genomics, and salesforce.com. His practice largely focuses on patent litigation, but he has experience in all areas of litigation, including general commercial, white collar, compliance, securities and employment. He has served as trial counsel in over a dozen jury trials, all of which resulted in victories for his clients.

Chambers USA 2014 ranks Mike as a leading lawyer in California in both IP and Life Sciences, stating that clients describe him as “a very fine lawyer; very creative and does a very effective job for his clients.” Chambers also notes that he is “an experienced patent litigator who works with a number of major players in the biotech and technology industries” (Chambers USA 2014) and that he “brings obvious industry and subject area expertise. He also brings the perspective of an in-house lawyer and a view towards what is best for the business.” (Chambers USA 2013). Mike was also recently recognized for his work in California in the 2014 edition of IAM Patent 1000, which points out that Mike “always hits the ground running and can go toe to toe with anybody out there.” Mike was named an “IP Star” by Managing IP Handbook 2014 and as a “Life Science Star” by Euromoney’s LMG Life Sciences Guide 2013, recommended by The Legal 500 United States 2013, and named one of The Daily Journal’s “Top 75 IP Litigators” in California for 2013 and 2010. Mike was also recognized in The Best Lawyers in America 2015 for Intellectual Property Litigation and Patent Law.

Prior to joining Kaye Scholer, Mike was the chief advocacy counsel for Affymetrix, Inc., a biotechnology company in Silicon Valley. As lead trial counsel, he obtained a jury verdict of infringement of five different Affymetrix patents and a 15 percent royalty rate in the District of Delaware, which led to a $90 million settlement. Before Affymetrix, Mike was an assistant US attorney for the Eastern and Northern Districts of California, where he investigated and prosecuted technology-related and intellectual property crimes, such as extensive counterfeit software rings, and other white collar matters.

Representative IP / Patent Matters

  • Representing Sequenom, Inc., the exclusive licensee of pioneering IP relating to noninvasive prenatal diagnosis methods, in several infringement actions in the District Court for the Northern District of California.

  • Representing Complete Genomics, Inc. (CGI) in two patent disputes relating to Complete Genomics’ disruptive sequencing technology, with one action pending in the District Court for the Northern District of California, and the other pending in the Southern District of California.

  • Representing Google, Inc. in several patent cases  pending before the District Courts of Delaware and the Northern District of California  regarding various Google products including Google’s critical core search and advertising functions.

  • Represented salesforce.com, Inc. in patent litigation in the Eastern District of Texas and in the Southern District of Florida.

  • Representing Affymetrix, Inc., whose GeneChip® technology revolutionized the field of nucleic acid research, in several patent and contract disputes relating to Affymetrix’s microarray products, including actions pending in Delaware and the Southern District of New York and (as appellee) in the Federal Circuit in an appeal from the District Court of Massachusetts.

  • Successfully represented Affymetrix in several matters:

    • As lead trial counsel, obtained jury verdict of infringement of five Affymetrix patents and royalty rate of 15 percent imposed; the matter subsequently settled for $90 million. Coordinated multijurisdictional strategy that included two US lawsuits, as well as parallel lawsuits in the UK and Germany.

    • Led the defense of Affymetrix in simultaneous proceedings regarding alleged infringement and validity of Multilyte’s patents in the US District Court (N.D. California), the UK, Germany, and the US Patent and Trademark Office. Multilyte’s patents were invalidated by the German Federal Patent Court; and Multilyte conceded judgment in the UK. The District Court subsequently ruled in Affymetrix’s favor construing the Multilyte patent claims and on that basis entered summary judgment of non-infringement (literal or under the doctrine of equivalents). This judgment was upheld on appeal to the Federal Circuit.

    • Served as co-lead trial counsel in an ICC arbitration regarding compliance with a patent license. After a week-long trial before a three-judge panel, the matter settled. Public announcement of the terms of the settlement resulted in a 12 percent one-day increase to Affymetrix’s stock.

    • Achieved successful settlement as lead counsel for Affymetrix in a AAA arbitration concerning seven-year relationship with a collaborator and supplier to Affymetrix.

  • Successfully defended Sequenom in litigation over three widely licensed patents relating to the use of “single base extension” methods for SNP genotyping. In the first litigation testing these patents, the plaintiffs agreed to dismiss the case with prejudice after the claim construction hearing. Sequenom was not required to take a license nor to pay any fees.

Representative General Commercial and Securities Litigation Matters

  • Lead trial counsel for private equity partner in arbitration regarding disputed provisions of a partnership agreement in wake of the partner’s departure from the firm. Obtained favorable settlement for client on eve of trial.

  • Defended CEO of business development company and private equity investor accused in civil action brought by the SEC of materially overstating the value of equity and debt investments in two private companies.

  • Represented individual Affymetrix directors and officers in consolidated shareholder derivative actions alleging stock option backdating and achieved favorable settlement in which no individual was required to make any payment or admit any culpability.

Representative White Collar Litigation and FCPA Matters

  • Presented overview of application of AG guidelines in pending FCPA investigation against oil company operating in Nigeria to DOJ authorities and successfully avoided felony convictions originally sought by DOJ.

  • Investigated potential business partner for new insurance venture in China and advised client on FCPA issues raised by investigation.

  • Co-led first investigation and  prosecution of shill bidding ring on eBay and related prosecutions and trial. The investigation was instigated by national press coverage of art auctions on eBay. Eventually, auctions garnering over $500,000 were discovered as tainted by shill bidding. eBay changed several feedback features and user policies in response to the results of the investigation. The investigation led to three guilty pleas and the disbarment of one attorney/defendant as well as the successful trial of a fourth defendant who harbored one of the defendants while he evaded law enforcement.

  • Successfully convicted after a four week trial a computer broker who engaged in commercial bribery of Hewlett Packard employees to gain exclusive access to valuable computer servers in the secondary market, as well as using an illegal copy of highly proprietary software to reset processors in the computer servers. HP estimated their damages at over $20 million. (Five other defendants, including an HP employee and her husband, pleaded guilty.) This prosecution was recognized as the “Most Significant High Tech Crime of 2000” by the National High Tech Crime Investigators Association.

  • Co-chaired two jury trials of two related sets of promoters of tax-evasion scheme involving the use of domestic and offshore “trusts” to hide income and assets. Promoter/defendants included a CPA and an attorney. At sentencing, the District Court found that the scheme had over 200 clients who had generated a tax loss of “conservatively” between $10 million and $20 million.

  • Tried one of three defendants for committing $700,000 fraud against the California Beverage Container Recycling Fund.

  • Convicted four defendants engaged in international luxury car theft ring, insurance fraud and international money laundering after four week trial. Over 200 luxury automobiles were purchased, insured, falsely reported stolen and shipped to China for resale. Losses to insurers totaled over $10 million.

Professional Activities

  • Board of Directors, Demonstratives, Inc., 2007–present

  • Co-Instructor, Boalt Hall School of Law, Computer Crimes Seminar, 2003–2004

  • Co-Instructor, Boalt Hall School of Law, Trial Advocacy, 2003

  • Article Development Editor, Virginia Environmental Law Journal, 1992–1993
News
 

Ranked in Chambers USA 2014 Leading Individual

Practice Areas

Education

University of Virginia School of Law, JD, 1993; Dillard Fellow

Yale College, BA, cum laude and with distinction, American Studies, 1988

Bar Admission(s)

California

US Supreme Court

US Court of Appeals, Federal Circuit

US Court of Appeals, 9th Circuit

US District Court, Northern District of California

US District Court, Central District of California

US District Court, Eastern District of California

US District Court, Southern District of California

US District Court, District of Delaware, pro hac vice

US District Court, Southern District of New York, pro hac vice

US District Court, District of Massachusetts, pro hac vice

 
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