Kaye Scholer

Prior to joining Kaye Scholer, Mr. Malecek 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, Mr. Malecek was an assistant U.S. 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 Matters

• Beckman Coulter Inc. & Orchid Cellmark Inc. v. Sequenom, Inc. 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.
  
  
• Affymetrix v. Illumina. 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 U.S. lawsuits, and lawsuits in the U.K. and Germany.
  
  
• Enzo v. Affymetrix. Represent Affymetrix in a patent infringement case relating to labeling of nucleic acids in the Southern District of New York.
  
  
• In re Affymetrix Derivative Litigation. Represented individual 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.
  
  
• Multilyte v. Affymetrix. Successfully led the defense of Affymetrix in simultaneous proceedings regarding alleged infringement and validity of Multilyte’s patents in the United States District Court (N.D. California), the United Kingdom, Germany, and the United States Patent and Trademark Office. Multilyte’s patents were invalidated by the German Federal Patent Court; and Multilyte conceded judgment in the United Kingdom. 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.
  
  
• ICC Arbitration re: Patent License. Co-lead trial counsel for Affymetrix in an ICC arbitration regarding compliance with a patent license. After a week-long trial to 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.
  
  
• AAA Arbitration re: Collaboration & Supply Agreements. Achieved successful settlement as lead counsel for Affymetrix in a AAA arbitration concerning seven-year relationship with a collaborator and supplier to Affymetrix.
  
  
• U.S. v. Fetterman, et al., and U. S. v. Terri Galipeaux. First 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.
  
  
• U. S. v. Adamson. Four-week trial of 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.
  
  
• U.S. v. Hendersons and U.S. v. Chappel, et al. 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 and $20 million.
  
  
• U. S. v. Chua. Trial of one of three defendants for committing $700,000 fraud against the California Beverage Container Recycling Fund.
  
  
• U. S. v. Ng, et al. Four-week trial of four defendants engaged in international luxury car theft ring, insurance fraud and international money laundering. Over 200 luxury automobiles were purchased, insured, falsely reported stolen and shipped to China for resale. Losses to insurers totaled over $10 million.

Selected 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.