Michael J. Kasdan

Partner

Michael J. Kasdan
Partner
office New York
phone 212-551-2843
fax212-490-0536
emailmkasdan@wiggin.com
view LinkedIn profile


Biography

Michael is a partner in the firm's Intellectual Property Practice and is a member of the Diversity Committee. He has negotiated, defended and asserted IP rights in the numerous federal courts, the US Patent and Trademark Office, the International Trade Commission and in private arbitrations and mediations. As an advisor, he has worked with both established companies and start-ups to obtain, evaluate value, license and develop patent portfolios and trademarks. In addition, Michael has been named one of the world's-leading IP Strategists in the 2017 edition of the IAM Strategy 300-The World's Leading IP Strategists

Trained in electrical engineering and with a business background as a technology consultant, Michael works with a broad range of technologies, including consumer electronics, wireless devices, medical products and devices, computer architecture, software and networks, open source issues, semiconductor chips and Internet and e-commerce platforms.

His clients rely on him to resolve both large and small patent, trademark, and copyright cases efficiently and cost-effectively. For example:

  • In a fast-moving ITC case, he spearheaded the two key claim construction issues for the joint defense group. The Administrative Law Judge took the unusual step of agreeing to stage the claim construction phase on potentially dispositive terms early in the case. The success in getting the Court to agree to an early claim construction phase drove favorable early settlements for numerous defendants.
  • In a competitor semiconductor case brought as part of a global patent war involving the major electronics companies, he was instrumental in the defense of patent infringement claims and helped to obtain a jury verdict of non-infringement for his client.
  • Michael was involved in the defense of a series of patent claims asserting infringement of mechanical processes, inspection processes and the materials structure of diaper and training pants products, among two competitors in the field.

Michael also counsels clients on strategic patent prosecution and portfolio development, and provides opinions and analyses on various patent issues, including patent infringement, validity and enforceability.

During 2008-2009, he was seconded to Panasonic Corporation in Japan. As in-house patent counsel in Panasonic's licensing center, he acted as lead counsel representing the company in numerous third-party patent assertions and license negotiations, where he was responsible for developing substantive defensive positions. Michael also provided legal opinions across a broad set of technology areas and in many facets of patent law, and negotiated complex agreements, including portfolio cross-license agreements. In addition, he worked with the company's managers and engineers to identify high value patents and to strengthen their protection and mitigate exposure to infringement claims.

Michael frequently writes and speaks on a range of topics including IP litigation, standard essential patents, patent monetization, valuation and licensing practices, how to address IP issues for start-up and early stage companies, patent eligibility, patent exhaustion, willful infringement, patent misuse, patent valuation and inequitable conduct. His articles have been published in leading publications, including LEXIS, Practical Law Company, IP LAW 360, Bloomberg/BNA, and Managing IP Magazine. Michael is the sole author of Practical Law Company's Practice Note on Patent Law and the Lexis Practice Advisor on Patent Licensing. He was selected to author the chapter on Patent Licensing and Monetization of the Oxford Handbook of Intellectual Property Law (Oxford Press, 2017). Michael has also been the keynote speaker at conferences addressing topics such as diversity and mentorship. In addition, he was interviewed on CNBC's public television Nightly Business Report regarding the Maps features of Snapchat and its privacy implications.

Michael also teaches as an adjunct professor at his alma mater, NYU, as well as at New York Law School, addressing topics such as IP licensing, global patent litigation, patent exhaustion, and inequitable conduct. He has also guest lectured at the NYU Business and Law Clinic, the NYU School of Medicine, and at New York Law School and Seton Hall Law School. He clerked for the Honorable Judge Roderick R. McKelvie in the United States District Court for the District of Delaware.

Michael received his J.D. magna cum laude, from New York University School of Law. He was a member the NYU Law Review, the Order of The Coif, and was Fish & Neave Fellow for the Engelberg Center on Innovation Law and Policy, and served as President of the Intellectual Property and Entertainment Law Society. He is the Co-Chair of the Media Committee for the NYIPLA (NY IP Lawyers Bar Association) and also serves as a member of the Legislative Action Committee.

Michael also received a B.S.E. in Electrical Engineering, magna cum laude, from the University of Pennsylvania. He was a member of Eta Kappa Nu and Tau Beta Pi, Engineering Honor Societies, and a member of Penn Parliamentary Debate Team.

Outside of work, Michael serves as the Director of Communications and Development of the non-profit MyChild'sCancer. He also serves on the Board of the SouthNextFestival. He was formerly the Chairman of the Board of the non-profit CityScience, which focuses on improving STEM Education in our cities. He is also a contributor for The Good Men Project. He has spoken on a variety of issues on major media networks, including CNBC, CNN Headline News, Al Jazeera America, NPR, and CBC Radio, and his writings have appeared in well-known publications such as The Huffington Post, Salon, The BBC, The Daily Dot, Money and Redbook

Recognitions

  • Named as one of the world's-leading IP Strategists in the 2017 edition of the IAM Strategy 300 - The World's Leading IP Strategists
  • Named as Super Lawyer, 2013 - 2017 (for more about the standards of inclusion in Super Lawyers, please click here)
  • Named as one of the Top 300 IP Strategists by Intellectual Asset Management Magazine, 2013

Memberships

  • American Bar Association
  • New York State Bar Association
    • IP Section
  • NYIPLA
    • Member, Legislative Action Committee
    • Co-Chair, Media Committee

Advisories

06.01.2017U.S. Supreme Court Broadens the Patent Exhaustion Doctrine in Impression Products v. Lexmark Int'l, Inc.
05.22.2017Supreme Court Drastically Limits Venue for Patent Cases
03.23.2017U.S. Supreme Court Eliminates Defense of Laches In Patent Infringement Cases
01.24.2017The Year In Intellectual Property: A Look Back at 2016 and a Look Ahead to 2017
12.06.2016Supreme Court Decision Regarding Damages for Design Patent Infringement
06.29.2016Busy Supreme Court Docket in Intellectual Property Highlighted by Cases on Enhanced Damages, Attorney's Fees, Claim Construction Standard in IPRs, and Extraterritoriality
01.29.2016Intellectual Property 2015 Year In Review
03.03.2015IEEE Clarifies Obligations When Licensing Standards-Essential Patents
03.03.2015Patent Exhaustion Update: The Federal Circuit Allows Royalties From Different Entities in Supply Chain
01.22.2015Supreme Court Changes Appellate Review Standard for Claim Construction
01.12.2015Intellectual Property 2014 Year in Review
12.17.2014In Ericsson v. D-Link The Federal Circuit Provides Guidance on Damages for Standard Essential Patents
06.20.2014Abstract Ideas Require Something More than Implementation on Generic Computer to be Patent Eligible
04.14.2014Licensing In the European Union: The European Commission Adopts New Regulations and Guidelines for Applying EU Competition Law To Technology Transfer Agreements

Published Works

09.25.2017Tracking Technologies: Privacy and Data Security IssuesPractical Law - Thomson Reuters
09.19.2017Patent Litigation: Mapping a Global Strategy (2017 Update) Practical Law US - Thomson Reuters
05.10.2017IP Licensing ChapterOxford Handbooks Online, Oxford University Press
08.25.2016Patent Licensing and MonetizationOxford Handbook of Intellectual Property Law
04.20.2015Patent Litigation Reform on the Horizon?Connecticut Law Tribune
09.30.2014Lessons from 2 Years of AIA Post-Grant ProceedingsLaw360, New York
09.29.2014Trends from 2 Years of AIA Post-Grant ProceedingsLaw360, New York
06.13.2014Patent Portfolio Valuation: A Lawyer's PerspectiveBNA's Patent, Trademark & Copyright Journal
11.06.2013Lessons from the 1st Year of Post-Grant ProceedingsLaw360
11.01.2013The NYIPLA Advocates for ClarificationNYIPLA Bulletin, October/November 2013
01.24.2013Isolated human genes and related therapeutic treatment methods held patent-eligibleJournal of Intellectual Property Law & Practice, Vol. 8, No. 2
01.24.2013Induced infringement of method claims where no single party performs all of the claimed stepsJournal of Intellectual Property Law & Practice, Vol. 8, No. 2
01.03.2013US Federal Circuit Confirms That Mere Inclusion Of A Computer Limitation Is Not Dispositive of Patent-EligibilityJournal of Intellectual Property Law & Practice, Vol. 8, No. 1
11.23.2012US jury properly relied upon second considerations of non-obviousness to overcome prima facie obviousnessJournal of Intellectual Property Law & Practice
11.23.2012The Dangers Of Hindsight Bias In The Context Of ObviousnessJournal of Intellectual Property Law & Practice
11.02.2012Monetization of a Firm's Patent Rights: A Lawyer's PerspectiveBloomberg BNA, BNA's Patent, Trademark & Copyright Journal, 85 PTCJ 22
10.26.2012AIA's Impact on Multidefendant Patent Litigation: Part 2IPLaw360, Public Policy and Technology Law360, New York
10.19.2012AIA's Impact on Multidefendant Patent Litigation: Part 1IPLaw360, Public Policy and Technology Law 360, New York
10.10.2012Injunctions for FRAND-Licensed Patents: Debate ContinuesLaw 360, Competition Law360, Appellate Law360, New York
09.05.2012Gear Up for AIA Post-Issuance ProceedingsManaging Intellectual Property
09.01.2012Decision by U.S. Court of Appeals for the Federal Circuit in Myriad Remand Mirrors Reasoning in NYIPLA Amicus BriefNew York Intellectual Property Law Association Bulletin, August/September 2012
08.01.2012How To Draft Terms Of Service OnlineManaging Intellectual Property, July/August 2012
10.15.2011Practice Note: Patent Infringement Claims and Defenses (Updated for America Invents Act)Practical Law Company
04.21.2011Is Facebook Killing Privacy Softly? The Impact of Facebook's Default Privacy Settings on Online PrivacyThe NYU IP and Entertainment Law Ledger
01.13.2011CAFC rejects the 25% Rule of Thumb as a Fundamentally Flawed Toll in Reasonable Royalty Calculation (available only in Japanese) Nikkei IP Awareness (published in Japanese only)
12.01.2010Federal Courts Closely Scrutinizing and Slashing Patent Damage Awards2010 Patently-O Patent L.J. 24
11.22.2010Student Speech in Online Social Networking Sites: Where to Draw the LineNYU IP and Entertainment Law Ledger
05.26.2010The Impact of American Needle on IP And ContractsIP Law360
04.06.2010The 2nd Circ. Stance on Tiffany v. EBayLaw360
03.31.2010Update to Recent Patent Damages ArticlePatently-O Guest Blog, Guest Post
03.17.2010Implications of Reed Elsevier v. MuchnickIP Law360
01.16.2008Will The High Court Clarify The Exhaustion Doctrine?IP Law 360
01.10.2008Reviving The Exhaustion DoctrineIP Law360
10.17.2007Infringement Assertions In The New World OrderIP Law 360, Guest Column
05.14.2007In re Seagate Technology: Wilfulness and Waiver, a Summary and a ProposalPatently-O Patent L.J. 1
05.07.2007Refining in U.S. Patent Law for SoftwareIP Law360
05.03.2007KSR v. Teleflex, Redefining The ObviousIP Law360

office New York
phone 212-551-2843
fax212-490-0536
emailmkasdan@wiggin.com
view LinkedIn profile

PRACTICE GROUPS

EDUCATION

  • New York University School of Law, J.D., 2001, magna cum laude, Order of the Coif
  • University of Pennsylvania, B.S.E., 1996, magna cum laude

BAR ADMISSIONS

  • New York

COURT ADMISSIONS

  • US Court of Appeals for the Federal Circuit
  • US District Court (Eastern District of New York)
  • US District Court (Southern District of New York)
  • US Supreme Court


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