Michael V. Solomita

Partner
Norton Rose Fulbright US LLP

New York
United States
T:+1 212 408 5420
New York
United States
T:+1 212 408 5420
Michael V. Solomita

Michael V. Solomita

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Biography

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Michael Solomita's practice covers all aspects of US intellectual property law, with a focus on US patent law. He has successfully handled numerous patent litigations throughout the country in US District Courts and the US International Trade Commission. Michael has also successfully challenged the validity of many patents in the US Patent and Trademark Office. He is registered to practice before the USPTO and has significant experience prosecuting several hundred patent applications covering a broad spectrum of technologies.

Michael was twice seconded to work in Japan as in-house patent counsel for Panasonic Corporation. There, he spearheaded patent licensing programs, directed litigations, and provided client counselling in all areas of US patent law. Michael has published numerous articles on IP issues and has lectured extensively in Japan and the US.

Michael is an avid pilot and was formerly an aerospace engineer for Lockheed Martin. There, he worked on the design of various fighter jets, with responsibilities cutting across many different technical disciplines. Building on his engineering experience, Michael has spent his legal career handling patent issues in diverse high technology areas.


Professional experience

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JD, magna cum laude, New York Law School, 1997
BS, cum laude, aerospace engineering, Polytechnic University, 1992

  • New York State Bar
  • US Patent & Trademark Attorney

Litigation

  • For more than 10 years, successfully defended a major Japanese printer equipment manufacturer in patent litigations throughout the US, including the Eastern District of Texas, the District of Delaware, the Central District of California, the Southern District of New York, and the District of New Jersey relating to technologies ranging from ink, toner, and printers to digital and video cameras. Obtained numerous favorable court decisions, including motions to dismiss, summary judgments, and a rare transfer out of the Eastern District of Texas.
  • Successfully defended a leading US telemedicine company against its main competitor and other plaintiffs in multiple patent litigations, including in the District of Massachusetts by securing a verdict of patent invalidity based upon a motion to dismiss under 35 U.S.C. § 101, in the Eastern District of Texas relating to on-line services, and in the District of Delaware involving cryptography.
  • Obtained compete victory for a plaintiff in the International Trade Commission against a competitor relating to lithographic printing plates, including obtaining a final exclusion order from President Obama. Also obtained complete victory for the same client in German infringement and nullity proceedings against a different defendant relating to lithographic printing plates, as well as in the District of New Hampshire as a plaintiff against yet another competitor.
  • Represented plaintiff, a major Japanese electronics manufacturer, in a lengthy jury trial in the District of Jersey against a competitor relating to semiconductor chips, which led to a favorable result for the client.
  • Successfully defended the US subsidiary of a major Japanese equipment manufacturer in patent litigation brought by its main competitor involving bio detection equipment.  Obtained a voluntary dismissal of a case filed in the District of Minnesota after securing a favorable ruling on personal jurisdiction, then obtained a summary judgment decision of invalidity based on lack of enablement in a subsequent case in the District of Arizona.
  • Successfully defended a major US manufacturer in a broad and complex patent litigation spanning 5 years and involving over a dozen patents in the Eastern District of Wisconsin brought by one of its main competitors relating to training paints by securing summary judgment decisions of non-infringement and invalidity for every asserted patent.
  • Successfully defended a number of different leading Japanese electronics manufacturers in multiple patent litigations for over 10 years throughout the country, including in the Northern District of California, Eastern District of Texas, District of Massachusetts, Western District of Washington, Western District of Tennessee, Central District of California, Southern District of Florida, District of Delaware, District of Kentucky, District of Connecticut, and the Northern District of Illinois.  The technologies included DVDs, televisions, Blu-ray disc players, digital signal processing, Bluetooth technology, security cameras, smart batteries, removable disc drives, telephone headsets, medical sensors, laser printers, and hard disc drives.
  • Successfully defended a major Japanese heavy equipment manufacturer in a patent litigation in the Eastern District of Texas involving excavators.
  • Successfully defended a US financial company in a patent litigation in the Southern District of New York relating to business method patents.
  • Successfully represented various fashion companies in trademark infringement litigation in the Southern District of New York against competitors.
  • Successfully defended a jewelry company in a copyright litigation in the Southern District of New York brought by a competitor.  
  • Successfully represented plaintiff, a US chemical company, in a trademark infringement litigation in the Middle District of Florida against a competitor selling counterfeit goods.


USPTO Post-Grant Proceedings

  • Michael has filed dozens of inter partes review petitions with the USPTO and has obtained successful results in all of those proceedings. He has also successfully challenged the invalidity of patents in numerous ex parte and inter partes reexaminations.


Patent Prosecution

  • Michael has filed and prosecuted several hundred patent applications throughout his lengthy career covering nearly every major technological areas. He has also created a Japan practice group that focuses on the filing and prosecution of US national stage applications for Japanese companies, with the ability to conduct communications with clients completely in Japanese.

•    Legal 500, recommended lawyer, Intellectual property - Patent litigation: full coverage, The Legal 500, 2018

US Intellectual Property Law for Japan Blog Posts:

  • "米国パテントエージェントの秘匿特権," March 11, 2016
  • "連邦巡回裁判所がAkamai v. Limelight事件において直接侵害の範囲を広げる判決," September 25, 2015
  • "USPTO がPTABによる特許発行後の再審査に対する追加のルールを提案," September 8, 2015
  • "Gilstrap 判事の新しい101条申請手続き," July 2, 2015
  • "原告側の弁護士に対する制裁措置," April 29, 2015
  • "パテントトロールを提訴する方法 (全3回:その3)," April 13, 2015
  • "パテントトロールを提訴する方法 (全3回:その2)," April 1, 2015
  • "パテントトロールを提訴する方法 (全3回:その1)," March 30, 2015
  • "米国最高裁判決:商標の「Tracking」は陪審が行うべき事実問題と結論 (Hana Financial v. Hana Bank)," March 5, 2015
  • "CAFC はPTABのIPR開始決定を再審することができないと結論 (In re Cuozzo Speed Technologies, LLC 事件)," February 26, 2015
  • "Alice 判決以降の米国特許事情," January 30, 2015
  • "Teva v. Sandoz(米国最高裁事件)- クレーム解釈判決の再審理における新基準," January 22, 2015
  • "特許権行使と戦うための新しい武器," November 24, 2014
  • "Recent Developments in U.S. Patent Practice and Fee Arrangements," Anderson, Mori & Tomotsune, Osaka and Tokyo, Japan, November 9, 12, 2018
  • "The Attorney-Client and Work Product Privileges in the US, A Practical Application for Japanese Companies," Oh-Ebashi LPC & Partners, Tokyo and Osaka, Japan, November 11, 19, 2015
  • "The Effectiveness of Patent Weapons in the US," Osaka Bar Association, Osaka, Japan, May 13, 2015
  • "How to Defend Against US Patents Assertions and Save Costs," JETRO NY, New York, NY, February 27, 2015
  • "How to Defend Against US Patent Assertions and Save Costs," Oh-Ebashi LPC & Partners and Midosuji Legal Profession Corporation, Osaka, Japan, October 24, 27, 2014
  • "inter partes Review in the USPTO: A Practical Guide," Saegusa & Partners event, Osaka, Japan, November 8, 2013
  • "Patent Information Fair & Conference," Tokyo, Japan, November 11, 2010
  • "How to Reduce the Costs for US Patent Litigation - Presented for the A.I.P.P.I.," Tokyo, Japan, October 20, 2009
  • "How to Reduce the Costs for US Patent Litigation - Presented in Partnership with the Kikkawa Law Firm," Osaka, Japan, October 15, 2009