Mike Malecek heads the firm's Silicon Valley office and serves as co-chair of the Intellectual Property group. Mr. Malecek represents some of the leading biotech and technology companies in the US, including Google, Sequenom, Affymetrix, Complete Genomics, and salesforce.com. His practice largely focuses on patent litigation, but he has experience in all areas of litigation, including general commercial, white collar, compliance, securities, and employment. He has served as trial counsel in more than a dozen jury trials, all of which resulted in victories for his clients.

Prior to joining the firm, 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 US$90 million settlement. Before Affymetrix, he was an assistant US 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.

Experience

  • Google in several patent cases before the District Courts of Delaware, Northern District of California, and Eastern District of Texas asserting infringement with respect to various aspects of Google's critical core search and advertising functions, as well as its Android operating system. Mr. Malecek led a successful defense of Google in the Eastern District of Texas in which plaintiff sought more than US$500 million from Google and its Android partners. He secured a jury verdict of non-infringement of five asserted patents and dismissal of four other asserted patents all related to digital rights management technology.
  • Sequenom, the exclusive licensee of pioneering IP relating to noninvasive prenatal diagnosis methods, in several infringement actions in the District Court for the Northern District of California and the Federal Circuit.
  • Complete Genomics in two patent disputes in the District Court for the Northern District of California and Southern District of California relating to Complete Genomics' disruptive sequencing technology. Mr. Malecek successfully secured dismissals with prejudice of both patent infringement suits.
  • Affymetrix, whose GeneChip® technology revolutionized the field of nucleic acid research, in several patent and contract disputes relating to Affymetrix's microarray products including the following:
    • Secured a summary judgment of non-infringement of patent to MIT professor on assays for reduction of complexity in DNA sample and successfully defended appeal of that ruling.
    • 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 US$90 million. Coordinated multijurisdictional strategy that included two US lawsuits, as well as parallel lawsuits in the UK and Germany.
  • Affymetrix in simultaneous proceedings regarding alleged infringement and validity of Multilyte's patents in the US District Court (N.D. California), the UK, Germany, and the US Patent and Trademark Office. Multilyte's patents were invalidated by the German Federal Patent Court; and Multilyte conceded judgment in the UK. 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.
  • Salesforce.com in patent litigation in the Eastern District of Texas and in the Southern District of Florida.
  • Cypress Semiconductor in offensive and defensive patent litigation in California and Texas related to USB and touch screen technologies.
  • Affymetrix as co-lead trial counsel in an ICC arbitration regarding compliance with a patent license. After a week-long trial before 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.
  • Affymetrix in an AAA arbitration concerning seven-year relationship with a collaborator and supplier to Affymetrix; achieved successful settlement.
  • 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 or to pay any fees.

Recognition

Chambers USA
Intellectual Property (California) (2013-2016)
Life Sciences (California) (2013-2016)
IAM Patent 1000
Litigation (2014-2016)
Managing Intellectual Property
IP Star (2013-2015)
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Credentials

Education
  • JD, University of Virginia School of Law, 1993, Dillard Fellow
  • BA, American Studies, Yale University, 1988, cum laude, with distinction
Admissions
  • California
  • Supreme Court of the United States
  • US Court of Appeals for the Federal Circuit
  • US Court of Appeals for the Ninth Circuit
  • US District Courts for the Northern, Eastern, Central, and Southern Districts of California
Government and Military Service
  • Assistant US attorney for the Eastern and Northern Districts of California
Clerkships
  • US District Court, Eastern District of Virginia, The Honorable Robert G. Doumar
Activities
  • Co-Instructor, Computer Crimes Seminar (2003–2004), Trial Advocacy (2003), Boalt Hall School of Law
  • Article Development Editor (1992–1993), Virginia Environmental Law Journal
Overview

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