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

vCard

Biography

Michael Solomita is a partner in the intellectual property group. Michael is a patent litigator who has successfully handled numerous litigations throughout the country in US District Courts and the US International Trade Commission. He 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 patent applications. As a result of his substantial experience, Michael counsels clients in all aspects of patent law.

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 counseling in all areas of 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
  • Autoloxer LLC v. Yanmar Am. Corp. (E.D. Tex.) patent litigation (excavators).
  • VStream Techns., LLC v. Ricoh Ams. Corp. (E.D. Tex.) patent litigation (video cameras) – secured favorable settlement.
  • American Well Corp. v. Teladoc, Inc. (D. Mass.) patent litigation (Telemedicine) – obtained grant of motion to dismiss invalidating asserted patent under 35 U.S.C. § 101.
  • Tullett Prebon PLC v. BGC Brokers LP (S.D.N.Y.) patent litigation (business methods) – secured favorable settlement.
  • TSI Inc. v. Azbil BioVigilant Inc. (Dist. Ariz.) patent litigation (bio-detection equipment) – obtained summary judgment of invalidity based on lack of enablement.
  • US Ethernet Innov., LLC v. Ricoh Ams. Corp. (E.D. Tex.) patent litigation (printers) – secured favorable settlement.
  • Norman IP Holdings, LLC v. Ricoh Ams. Corp. (E.D. Tex.) patent Litigation (printers) – secured favorable settlement.
  • Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC (E.D. Wis.) patent litigation (training pants) – obtained summary judgment decisions of non-infringement and invalidity.
  • TSI, Inc. v. BioVigilant Sys. Inc. (Dist. Minn.) patent litigation (bio-detection equipment) – obtained voluntary dismissal of the case after favorable ruling on personal jurisdiction.
  • Princeton Digital Image Corp. v. Ricoh Co. (E.D. Tex.) patent litigation (digital cameras and printers) – obtained transfer of case to the Southern District of New York and then secured favorable settlement.
  • Millennium, L.P. v. Ricoh Ams. Corp. (Dist. N.J.) patent litigation (printers) – secured favorable settlement.
  • Orinda Intellectual Props. v. Asustek Computer Inc. (N.D. Cal.) Patent Litigation (DVDs) – represented Funai and worked with numerous defendants to stay case pending reexamination.
  • Innovus Prime LLC v. LG Elec. Inc. (N.D. Cal.) patent litigation (televisions) – represented Funai and secured favorable settlement.
  • In re: Certain Laser Imageable Lithographic (USITC) patent litigation (lithographic printing plates) – obtained complete victory for the complainant.
  • Digital Sec. Sys. Corp., LLC v. Samsung Elec. Co. (E.D. Tex.) patent litigation (Blu-ray) – represented Panasonic and secured favorable settlement.
  • Presstek Inc. v. VIM Techns. Ltd. (Landgericht Düsseldorf) German patent litigation (lithographic printing plates) – obtained complete victory for plaintiff.
  • Positive Techns., Inc. v. Benq Am. Corp. (E.D. Tex.) patent litigation (LCD/plasma televisions).
  • Positive Techns., Inc. v. Fujitsu Am., Inc. (E.D. Tex.) patent litigation (LCD/plasma televisions).
  • Presstek, Inc. v. Creo, Inc. (Dist. N.H.) patent litigation (lithographic printing plates).
  • Presstek Inc. v. Fuji Photo Film Co. (Dist. Ct. Mannheim) German patent litigation (lithographic printing plates).
  • Matsushita Elec. Indus. Co. v. Samsung Elec. Co. (Dist. N.J.) patent litigation (semiconductors).
  • Soft Lines Ltd. v. Helen of Troy Ltd. (S.D.N.Y.) patent litigation (hair removers).
  • Wash. Research Found. v. Matsushita Elec. Indus. Co. (W.D. Wash.) patent litigation (Bluetooth).
  • Lectrolarm Custom Sys., Inc. v. Vicon Inds. (W.D. Tenn.) patent litigation (security cameras).
  • Unova, Inc. v. Acer Inc. (C.D. Cal.) patent litigation (smart batteries and removable disc drives).
  • Mass. Inst. of Techn. v. Abacus Software, Inc. (E.D. Tex.) patent litigation (digital signal processing and TVs).
  • Silver v. Panasonic Corp. (S.D. Fla.) patent litigation (telephone headsets).
  • Matsushita Elec. Indus. Co. v. Inverness Med. Tech., Inc. (Dist. Del.) patent litigation (glucose medical sensors).
  • Lexmark Intl., Inc. v. Pitney Bowes, Inc. (E.D. Ky.) patent litigation (laser printers).
  • Pitney Bowes, Inc. v. Epson Am., Inc. (Dist. Conn.) patent litigation (laser printers).
  • Papst Licens., GmbH v. Matsushita Elec. Indus. Co. (N.D. Ill.) patent litigation (hard disc drives).
  • Generation X Inter'l Corp. v. No Excuses Sportswear, Ltd. (S.D.N.Y.) trademark litigation.
  • Christian Dior Couture v. Pelle Via Roma (S.D.N.Y.) trademark litigation.
  • Sandberg & Sikorski Corp. v. Andin Intl Inc. (S.D.N.Y.) copyright litigation.
  • Hoechst Celanese Corp. v. Nylon Eng'g Resins, Inc. (M.D. Fla.) trademark litigation.
  • 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
  • "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