Partner

Michael R. Franzinger

IP Litigation

mfranzinger@sidley.com

Washington, D.C. +1 202 736 8583

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MICHAEL FRANZINGER is a trial and appellate lawyer for clients in patent, trade secret, and other technically-oriented litigation and administrative proceedings. His practice focuses on Section 337 investigations before the U.S. International Trade Commission (ITC). He has represented and advised clients in over 30 ITC Section 337 investigations, as well as arbitrations and mediations, district court lawsuits, patent reexaminations and reviews, license negotiations, and merger due diligence. As a member of Sidley’s IP Litigation group, Mike routinely handles technical issues ranging from electronics and software to chemistry and materials science, and has taken on leading roles at trial, including first-chair counsel. These matters have spanned a variety of different technologies, including networked storage, mobile communication, digital radio, solar cells, audio processing, touchscreen interfaces, digital rights management, electronic securities trading, semiconductor fabrication, biometrics, electronics packaging, rubber resins, and agricultural chemicals.

Mike has been a principal contributor to numerous Sidley IP litigation successes, including:

Ten evidentiary hearings (trials) in the ITC since 2011, resulting in eight wins, one take-nothing settlement, and one successful design-around.
A complete dismissal of plaintiff’s case at the close of fact discovery in the U.S. District Court for the Western District of Texas.
Defeating a summary judgment motion seeking dismissal of the client’s antitrust claims in standard-essential patent/FRAND licensing litigation in the U.S. District Court for the Northern District of California.
A jury verdict of noninfringement in the U.S. District Court for the Eastern District of Texas, thwarting plaintiff’s claim for damages in the high nine figures.
Persuading a Court-appointed neutral expert witness in a semiconductor case to opine in our client’s favor on both noninfringement and invalidity.

Mike simultaneously earned both a law degree and a Master’s in materials science from the University of California, Berkeley. He served on the editorial boards of the California Law Review and the Berkeley Technology Law Journal. While in school, he also prosecuted patents as a registered patent agent. Mike has an undergraduate degree in chemical engineering.

Experience

The ITC cases Mike has litigated include:

Trial counsel for respondent in investigation related to surface texturing of solar cells. Commission found no violation.
Trial counsel for respondent in investigation addressing laser cutting of solar cells. Case settled with no payment and no withdrawal of any active products from the market.
Represented complainant in countersuit regarding vehicle remote security and convenience systems. Case settled before trial, with dismissal of opponent’s original suit.
Represented respondent in investigation regarding photovoltaic cells. Secured a dispositive claim construction ruling, resulting in a rare grant of summary determination of non-infringement. Commission and Federal Circuit affirmed.
Represented respondent in investigation involving memory modules. Commission found no violation.
Represented respondent e-commerce company in investigation involving insulated beverage containers. Settled at close of fact discovery.
Trial counsel for respondent in investigation involving audio processing. Commission found no violation.
Trial counsel for respondent in investigation involving memory modules. Commission found no violation. Federal Circuit affirmed.
First-chair trial counsel for e-commerce company in investigation involving motorized two-wheeled self-balancing vehicles (a.k.a. “hoverboards”). Secured initial determination of no jurisdiction.
Represented respondent in investigation involving RF circuits. Complainant terminated case before trial.
Trial counsel for respondent in investigation involving agricultural chemicals. Secured denial of temporary relief and final determination of no violation.
Represented complainant in investigation regarding retail security tags. Settled, with respondents agreeing to consent order.
Represented respondent and the Commission found no violation.
Represented complainant and the Commission found a violation, which was affirmed by the Federal Circuit.
Represented respondent in a case involving touchscreens and touchpads. Respondent prevailed with a finding of no violation.
Represented respondent in investigation concerning semiconductor packaging. Complainant terminated the investigation.

Mike has also handled cases in a variety of district courts, including:

Represented defendant in patent litigation involving routers, switches, and network controllers in the Western District of Texas. Plaintiff dismissed its entire case at the close of fact discovery.
Represented defendant in e-commerce patent litigation in the District of Delaware. Won motion to dismiss on the basis of patent-ineligible subject matter under Section 101.
Represented defendant in patent litigation, in the Eastern District of Texas, involving digital rights management, culminating in jury verdict of noninfringement, which was affirmed on appeal.
Represented plaintiff in standard-essential patent litigation in the Northern District of California. Settled shortly before trial, after obtaining denial of defendant’s summary judgment motion on antitrust claims.

Mike organizes associate skills development programs as a member of the IP Litigation group’s Training Committee. He has served as a mentor for the Hispanic National Bar Association’s IP Law Institute, is a former member of the Advisory Council for the U.S. Court of Appeals for the Federal Circuit, and is a current co-chair of the Amicus Committee of the Federal Circuit Bar Association.

Mike also participated in the Federal Circuit Bar Association’s IP Global Fellows program, an immersive two-week exchange bringing together experienced lawyers from around the world to enrich each other’s understanding of the U.S. and European patent law systems.

Credentials

Admissions & Certifications

U.S. Supreme Court
U.S. Patent & Trademark Office
U.S. Court of Appeals, 9th Circuit
U.S. Court of Appeals, Federal Circuit
U.S. District Court, N.D. of California
U.S. District Court, W.D. of Texas
California
District of Columbia

Michael R. Franzinger

Credentials

Admissions & Certifications

Education

Clerkships

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