TEAM & FOUNDERS
The firm’s founders started working together 25 years ago, and since then, they have worked together for most of those years.
As a team, they have worked on some of the most complex and high-stakes matters for their clients, always bringing innovative solutions.
It was therefore not surprising that the founders decided to team up
and form a new firm backed by an experienced team of attorneys, paralegals, and support staff.
Michael Kiklis and Kimani Clark
He has been involved in approximately 100 PTAB trials, serving as lead counsel in the vast majority of those cases. He also handles appeals to the Federal Circuit from his cases, having now been involved in over 20 appeals. He both enforces and defends the intellectual property rights of his clients, and is often called upon to handle cases worth more than $100 million.
Mike brings an in-depth understanding of the business and IP needs of his technology clients, which he developed from years of experience in virtually every kind of patent matter, from cross-licensing and due diligence to bet-the-company PTAB trials and patent litigation. Mike has an extensive background in computer science based on his six years of experience as a software developer at some of the computer industry’s leading companies.
Mike provides significant and influential thought leadership as a frequent speaker and author on patent law, including patentable subject matter and PTAB trials. He is also the author of The Supreme Court on Patent Law, an 800-page treatise devoted to the Supreme Court’s patent law jurisprudence.
- Represented Life Technologies Corp. in a Federal Circuit Appeal stemming from a 2017 Patent Trial and Appeal Board (PTAB) decision in a covered business method proceeding (CBM). Mike represented Life Technologies in two covered business method proceedings: one was filed in 2014 and the other was filed in 2015. Life Technologies prevailed in both proceedings with the PTAB finding that all challenged claims of Unisone Strategic IP Inc.’s inventory management patent recited ineligible subject matter pursuant to 35 U.S.C. § 101. This appeal involved the second CBM. Unisone chose not to appeal the first CBM. The Federal Circuit heard oral argument on December 4, 2018, and then affirmed the PTAB’s decision less than one week later.
- Counsel in approximately 100 inter partes review (IPR) and Covered Business Method patent review (CBM) proceedings at the USPTO’s Patent Trial and Appeal Board (PTAB), serving as lead counsel in the vast majority of those cases. Many of Mike’s cases involve a co-pending proceeding, such as at the district court, the Federal Circuit, or the Supreme Court.
- Served as lead counsel in a group of 24 related IPRs for a large Oil Services company.
- Represented a software company in the successful enforcement of its patent against virtually an entire industry of over thirty companies — including Microsoft and IBM — in two patent litigations in the Eastern District of Texas, resulting in favorable settlement.
- Represented a major computer company in its landmark antitrust case against Microsoft, resulting in a $1.95 billion settlement.
- Co-counsel on the first CBM filed at the PTAB.
- Represented a national organization of legal professionals as co-author of a Supreme Court amicus brief in Bilski & Warsaw v. Kappos.
- Represented a financial services company in defense of a claim of patent infringement on a business method patent, resulting in a favorable settlement.
- Represented a trade association as co-author of a Supreme Court amicus brief in Quanta Computer, Inc. v. LG Electronics, Inc.
- Represented several large software/computer companies in cross-licensing negotiations with IBM and other high technology companies.
- Represented a large computer company as opinion counsel in defense of a software patent infringement case where over $1 billion was at stake; the plaintiff dropped its willfulness claim.
- Syracuse University College of Law – J.D., magna cum laude,1993
- Boston University – M.S. Computer Science, 1988
- University of Massachusetts Lowell – B.S. Computer Science, 1985
- District of Columbia
- U.S. Patent and Trademark Office
- U.S. Supreme Court
- U.S. Court of Appeals, Federal Circuit
- U.S. District Court, District of Columbia
- U.S. District Court, Eastern District of Texas
- U.S. District Court, Eastern District of Virginia
A graduate of M.I.T. and Stanford Law, Kimani has represented some of the world’s leading technology companies in large, complex and high stakes matters. In his career, he’s also been served as a partner in some of the nation’s most prestigious law firms.
Kimani’s computer science and engineering background from M.I.T., and his business acumen as a founder of multiple tech companies, provide a distinct advantage in handling complex computing technologies for his clients and advising on the intersection between business and the law. His patent practice includes patent prosecution, patent litigation and patent counseling.
Kimani brings continual innovation to every area of his practice including legal tactics, client service, operations and technology. With a thorough understanding of a client’s business and proactive representation, he provides outstanding value to clients from small, cutting-edge businesses to large corporations.
Kimani’s experience further includes managing large-scale patent prosecution, pre-litigation strategies and negotiations, large-scale patent studies, cross licensing, performing infringement and validity analyses, and preparing patent opinions.
In his representation of the world’s leading companies, Kimani’s experience includes the representation of:
- Management of patent prosecution of large patent portfolios of some of the world’s largest software companies
- a large financial services company in defense of a claim of patent infringement on a business method patent, resulting in a favorable settlement
- a software company in its patent litigation in the Eastern District of Texas against fifteen companies involving computer and software technology
- one of the world’s largest software/computer companies in cross-licensing negotiations with other large high-technology companies, involving study and analysis of hundreds of software patents
- Filing the patents for the startup company that originated after-hours stock trading which was subsequently acquired by E*TRADE for $100M
- a large semiconductor and electronics manufacturer in litigation in the Eastern District of Texas involving patents related to semiconductor technology; the company was involved in over a dozen related lawsuits worldwide
- a large financial software company in cross-licensing negotiations with a global computer and software company.
- one of the world’s largest electronics and semiconductor manufacturers in a multi-patent suit regarding semiconductor manufacturing processes, resulting in a favorable settlement
- Massachusetts Institute of Technology – B.S., Computer Science and Engineering
- Stanford Law School – J.D., Law
Kimani is registered to practice before the U.S. Patent and Trademark Office and is a member of the District of Columbia, Virginia and Maryland bars. He also serves as a member of several associations, including the Stanford Law Black Alumni Association, Maryland Bar Association, District of Columbia Bar Association and was a member of the Stanford Law and Technology Association.
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