Michael K. Jones
Michael K. Jones is a partner in the Intellectual Property Transactions and Rights Management Practice Group of Pepper Hamilton LLP, resident in the Philadelphia office.
A registered patent attorney, Mr. Jones’ practice focuses on all aspects of intellectual property including strategic intellectual property counseling and portfolio management, patent procurement (including domestic and foreign rights), patent opinions (including freedom to operate, non-infringement, invalidity, patentability), due diligence, licensing, and enforcing and defending patent rights.
Mr. Jones has counseled clients in a variety of industries and in a wide range of technologies, including mechanical and electrical devices, electronics, communication systems, computer hardware, data collection and storage systems, content conditioning and delivery systems, software, mobile device management and security, electrical power generation, distribution and control, electrical connectors, robotics and automated systems, medical devices, clean technologies, consumer products, clothing apparel, biometrics, optics, printing and imaging systems, vessel design and construction, watercraft propulsion and auxiliary systems, manufacturing techniques, packaging, advanced materials, ecommerce, and business methods, including for example, business methods in the banking, insurance, investment and financial services industries.
In addition to being a member of the firm’s Intellectual Property Practice Group, Mr. Jones also is a member of the firm’s Sustainability, CleanTech and Climate Change Team; Food and Beverage Industry Group; Life Sciences Practice Group; Medical Device Group; and Veterans Affinity Group.
Representative patent litigation cases in which Mr. Jones has participated include:
Mr. Jones joined Pepper from Woodcock Washburn LLP in Philadelphia, where he was a partner. Before earning his law degree, he was a patent agent with that firm. Earlier in his career, he was an engineer for more than ten years with the Naval Surface Warfare Center – Ship Systems Engineering Station. From a technology standpoint, Mr. Jones’ practical experience as an engineer is a valuable asset in his legal practice. His experience as a practicing engineer also helped him to gain a recognition and appreciation into the business forces that help drive various business decisions and, as an intellectual property lawyer, Mr. Jones uses that experience to consult and advise clients regarding various intellectual property issues.
- EIC Solutions, Inc. v. CP Cases, COOL, Bruce Blackway, case 1:13-cv-03609-WDQ (U.S. District Court, District of Maryland) – recently filed compliant for patent infringement of patents directed to thermoelectric air conditioners and thermoelectrically air conditioned transit cases on behalf of plaintiff.
- coordination and management of international patent enforcement and licensing program for patent portfolio directed to cosmetic products, including thermal storage tips for cosmetic applicators. Several litigations are in progress including:
- HCT Asia Ltd . v. S.A. JACKEL France, High Court of Paris [Tribunal de Grande Instance de Paris], 3rd chamber, 3rd section, Docket no.: 13/00816.
- HCT v. Yonwoo, multiple patent forums in Korea – plaintiff in patent infringement action before the District Court; patent owner defending Korean patent in an invalidation proceeding before the Korean Intellectual Property Tribunal; and patent owner defending Korean patent in a Confirmation of Scope Action before the Korean Intellectual Property Tribunal; Appellee before the Korean Patent Court in appeal from the Korean Intellectual Property Tribunal upholding the validity of the Korean patent and holding the accused device falls within the scope of the Korean patent in the Confirmation of Scope Action.
- KKG, LLC v. The Rank Group, PLC d/b/a Reynolds Kitchens and/or Reynolds Group et al, 2-11-cv-00012 (U.S. District Court, Eastern District of Texas) – liner systems for food service applications – e.g., liners for slow cooker. Successfully obtained a voluntary dismissal for client during the early stages of discovery by showing plaintiff it did not have a case of patent infringement against our client.
- The PACid Group, LLC v. Cisco Systems, Inc., et al. (U.S. District Court, Eastern District of Texas) – represented seven co-defendants in a joint defense group in a case asserting patents covering encryption software. Successfully negotiated an early settlement, patent license, and covenant not to sue.
- Ferndale Laboratories, Inc. v. Prugen, Inc., et al. (U.S. District Court, Easter District of Michigan (Detroit) – successfully negotiated a license and settlement of the case involving composition of cream for topical application of medication under term favorable to our client during the initial pleading stage of case.
- Trans World Technologies, Inc. v. Raytheon Co., et al. (U.S. District Court, District of New Jersey) – obtained favorable settlement and a monetary award for Trans World Technologies, Inc. in case involving misappropriation of trade secrets, antitrust and patent infringement. Technology involved included physics-based software, mathematical modeling and artificial intelligence.
- Iridian Technologies v. Iritech, Inc., (High Courts of Justice, Chancery Division, Great Britain); Iridian Technologies, Inc. v. Senex Technologies, (Court of Rome, Italy); and Iridian Technologies, Inc. v. Iritech, Inc., (U.S. District Court, District of Delaware) – These three cases involved worldwide assertion of a pioneering patent in the field of biometric iris authentication in which the client was able to successfully prevent and delay several would-be competitors from entering into this field. Helped mediate a settlement and negotiated favorable license agreements for the client.
- United States Filter Corporation v. Met-Pro Corporation, (U.S. District Court, District of Delaware) – successfully defended client in a patent infringement action through discovery and claim construction, thereafter obtaining a favorable settlement and dismissal.
- Maritrans, Inc. v. Penn Maritime, Inc., (U.S. District Court, Middle District of Florida) – successfully asserted several of client’s patents and obtained a successful settlement for client on the eve of trial, thus helping client protect their business interests and extract value from their R&D investment through the procurement and strategic use of the client’s intellectual property.
- Penn Maritime, Inc. v. Maritrans, Inc., (U.S. District Court, Eastern District of New York) – successfully obtained dismissal of a declaratory judgment action against client for lack of personal jurisdiction over the patentee defendant.
- Lakewood Engineering, Inc. v. Lasko Metal Products, Inc., (U.S. District Court, Northern District of Illinois, Eastern Division); Lakewood Engineering, Inc. v. Lasko Metal Products, Inc., (U.S. District Court, Northern District of Illinois) – both cases involving fan and motor technologies. Helped negotiate a settlement of case at conclusion of trial.
- Holmes Group, Inc. v. Lasko Group, Inc., (U.S. District Court, Eastern District of New York) – steered case to an early settlement, protecting client’s interests and obtaining a favorable license that allowed the client to continue to do business in the particular market.
Mr. Jones is a member of the American Bar Association (ABA), the American Intellectual Property Law Association (AIPLA), the Philadelphia Intellectual Property Law Association (PIPLA), the Intellectual Property Owners (IPO) Association, and the Licensing Executive Society (LES). He has previously held commissions of Lieutenant Commander of the U.S. Navy Reserves and has held a U.S. Coast Guard License as a Third Assistant Engineer for Steam and Motor Vessels of unlimited horsepower.
Mr. Jones is admitted to practice in Pennsylvania and New Jersey, before the U.S. Patent and Trademark Office, and in the U.S. District Court for the Eastern District of Pennsylvania.
B.S. 1987 U.S. Merchant Marine Academy (Marine Engineering Systems and Mechanical Engineering)
J.D. 1998 Rutgers University School of Law
Admitted to practice in Pennsylvania and New Jersey and before the U.S. Patent and Trademark Office