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 focuses on all areas of intellectual property law, harnessing his electrical engineering background to help businesses reap maximum value from their innovations.

As a Partner in the firm's Intellectual Property Practice Group, Michael develops effective offensive and defensive patent strategies for organizations of all sizes. He has negotiated, defended, and asserted IP rights in federal courts, the U. S. Patent and Trademark Office, the International Trade Commission, and private arbitrations and mediations. As an advisor, he has worked with both established companies and startups to obtain, value, license, and develop patent portfolios and trademarks.

Trained in electrical engineering and having a business background as a technology consultant, Michael is known for his ability to quickly learn new technologies and distill complicated topics. He works with a broad range of technologies, including consumer electronics, wireless devices, batteries, mechanical devices, medical products and devices, computer architecture, software, and networks, including open-source software, semiconductor chips, and internet and e-commerce platforms.

Michael was listed in the 2017 edition of IAM Strategy 300 – The World's Leading IP Strategists and has regularly been listed in Super Lawyers. Clients describe him as creative, energetic, and easy to work with and seek his insight into the business, technology, and legal facets of their IP issues.

Michael has defended and resolved scores of patent infringement lawsuits, resulting in successful motions to dismiss, summary judgment, and favorable settlements, in all of the key patent infringement venues, including the District of Delaware, the Eastern District of Texas, the Northern District of California, and the Northern District of Illinois. For example, Michael recently

  • Spearheaded key arguments in a patent-defense case for JVC, winning favorable ITC decisions and securing early settlements for numerous defendants.
  • Vindicated Panasonic in a jury verdict that was central to a semiconductor patent war with Samsung.
  • Helped invalidate key patents held by VirnetX, which had previously won verdicts in the hundreds of millions of dollars from industry giants such as Apple.

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.

In 2008– 2009, he was seconded to Panasonic Corporation in Japan. As in-house patent counsel in the company's licensing center, he acted as lead counsel representing the company in litigation, third-party patent assertions, license negotiations, portfolio cross-license agreements, and strategy.

Michael writes and speaks extensively. His articles have appeared in LEXIS, Practical Law Company, IP LAW 360, Bloomberg/BNA, Managing IP Magazine, and elsewhere. Michael is the sole author of Practical Law Company's Practice Note on Patent Law and the Lexis Practice Advisor on Patent Licensing and is a co-author of Practical Law Company's Practice Notes on Global Patent Litigation and Licensing and on Tracking and Privacy. He is the author of the chapter on Patent Licensing and Monetization of the Oxford Handbook of Intellectual Property Law (Oxford Press, 2017). He also has assumed leadership positions in the IP bar. He heads the New York Chapter of the International Intellectual Property Commercialization Council (IIPCC), is the Co-chair of the Media Committee for the New York IP Lawyers Bar Association (NYIPLA), and serves as a member of the Legislative Action Committee.

A member of the Firm's Diversity Committee, Michael has been the keynote speaker at conferences addressing topics such as diversity and mentorship. Michael is also an adjunct professor at his alma mater, NYU, as well as at New York Law School. He has guest lectured at the NYU Business and Law Clinic, the NYU School of Medicine, New York Law School, and Seton Hall Law School.

He has appeared on major media networks, including CNN, CNN Headline News, Al Jazeera America, NPR, CBS News Radio, and CBC Radio, and his writings have appeared in publications such as The Huffington Post, Salon, The BBC, The Daily Dot, Money, and Redbook. Recently, he was interviewed on CNBC's public television show Nightly Business Report regarding the Maps features of Snapchat and their privacy implications.

Michael received his J.D. magna cum laude from New York University School of Law. He was a member of the NYU Law Review and the Order of the Coif, 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. After law school, he clerked for the Honorable Judge Roderick R. McKelvie in the U. S. District Court for the District of Delaware. Michael received a B.S.E. in electrical engineering magna cum laude from the University of Pennsylvania. He was a member of Eta Kappa Nu, Tau Beta Pi, and the Penn Parliamentary Debate Team.

Michael serves as Director of Communications and Development of the nonprofit MyChild'sCancer and on the board of the SouthNextFestival and was formerly Chairman of the Board of the nonprofit CityScience, which focuses on improving STEM education in cities. He is also a contributor for The Good Men Project.

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
  • New York Chapter of the International Intellectual Property Commercialization Council (IIPCC)

Advisories

03.12.2018Recent Developments in Intellectual Property Law
12.15.2017Intellectual Property Group Practice Update & Recent Happenings
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

08.01.2018The Oxford Handbook of Intellectual Property LawOxford University Press
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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