Michael A. Jacobs

Partner, San Francisco at Morrison & Foerster LLP

Michael A. Jacobs

Michael A. Jacobs

Partner, San Francisco at Morrison & Foerster LLP

Biography

Many of the world’s leading technology and life sciences companies call on Michael Jacobs to lead trial teams in their most complex litigation. He served as co-lead counsel in two of the most-watched intellectual property battles of recent memory, including a high-profile smartphone case leading to a jury verdict of over $1 billion. And the life sciences industry’s first and most successful biotechnology company looks to Mr. Jacobs when patent and licensing disputes arise. Mr. Jacobs co-founded the firm’s Intellectual Property Practice Group, currently heads its Life Sciences Practice Group, and co-chairs the Intellectual Property Practice Group.

Mr. Jacobs is listed in Band 1 by Chambers USA 2016 in its California Intellectual Property category and in Chambers Global 2016 as a leading attorney for Intellectual Property. He was listed from 2012-2014 among the top attorneys in The BTI Client Service All-Star MVP, nominated by clients and selected for consistent outstanding client service.

Mr. Jacobs has won the California Lawyer Attorneys of the Year (CLAY) award three times, first for his advocacy on behalf of Intel in the Intel v. Hamidi “trespass to chattels” case, in 2012 for his defense of Novell in SCO v. Novell, and in 2014 for his work on a billion dollar smartphone trial. He also has twice been named “Litigator of the Week” by The American Lawyer, once for his victory in the Novell case and, in September 2012, for his victory in a billion dollar smartphone trial in the Northern District of California. In 2016, Mr. Jacobs is ranked in gold for patent litigation in California in the IAM Patent 1000 and is recommended by Legal 500 US in Healthcare: Life Sciences, Copyright, and Patent Litigation: Full Coverage. He has been recognized as a “Life Sciences Star” by LMG Life Sciences in 2014 and has been selected by his peers for inclusion in the 2006-2016 Best Lawyers in America lists. In 2014, he was included on the Daily Journal’s list of the top 100 lawyers in California.

Mr. Jacobs’ work in several landmark cases has helped to shape the laws governing emerging technologies. Early in his career, he led the technical team that represented Fujitsu in its landmark operating system software arbitration with IBM. He represented the motion picture industry in the On Command Video case, which established that on-demand video systems require a license under copyright’s public performance right. Mr. Jacobs represented Novell in the widely reported SCO v. Novell Linux litigation, prevailing in a bench trial on Novell’s multi-million dollar claims, defeating SCO’s $200 million claim in a three-week jury trial, and defending those results on appeal in the 10th Circuit. He also represented Autodesk in the Vernor v. Autodesk case, which established that copyright’s first sale doctrine does not immunize the re-sale of licensed software.

In addition, he has represented leading life sciences companies in their cutting edge litigation, including Genentech in its patent dispute with Phigenix concerning Genentech’s blockbuster drug, Kadcyla, Washington University in St. Louis in life sciences patent and licensing disputes, Chiron in its HCV protease litigation, and Abraxis in its nanoparticle anticancer treatment dispute with Elan Pharma. He has also handled numerous high-profile arbitrations, several of which involved the interplay between arbitration and court proceedings.

Mr. Jacobs has also achieved victories in important pro bono cases. He was co-lead counsel for plaintiffs in the landmark Williams v. State of California class action, which led to a settlement in which the State undertook to address shocking conditions in California’s lowest performing schools. He also represented the Jewish Community Relations Council and the Anti-Defamation League in a successful pre-election challenge to an anti-circumcision initiative slated for San Francisco’s ballot.

Mr. Jacobs routinely speaks on cutting-edge intellectual property issues. For example, for the last several years he has participated in the Federal Judicial Center-Berkeley Center for Law & Technology’s education program for federal judges.

Smartphone Litigation

Co-lead counsel in a high-profile smartphone case leading to a jury verdict of over $1 billion.

Microscan Systems, Inc. v. Cognex Corporation

(Southern District of New York). Won a jury verdict of infringement, validity, and reasonable royalty damages for plaintiff Microscan in a patent case related to high-end barcode scanners.

SCO Group v. Novell

(District of Utah, Tenth Circuit). Prevailed in three-week jury trial in Salt Lake City against SCO’s “slander of title” claims involving the UNIX and Linux operating systems when a jury determined that Novell owned the UNIX copyrights. (2010) In an earlier bench trial, won multi-million dollar award for Novell based on its right to royalty payments from UNIX software licenses granted by SCO. (2008) Successfully defended verdicts in 10th Circuit appeal. (2011)

eTool v. National Semiconductor

(Eastern District of Texas). Defeated plaintiff’s claim of patent infringement involving National Semiconductor’s online circuit design tool on summary judgment. Case settled in 2012 after defeating plaintiff’s motion for reconsideration.

Juniper Networks, Inc. v. Palo Alto Networks, Inc.

(District of Delaware). Lead counsel for Palo Alto Networks in case related to firewall technology with chief rival Juniper Networks. After a two-week trial, a mistrial was declared because the jurors were unable to reach a verdict. Shortly thereafter, the case and related litigation were settled on favorable terms with a cross-license agreement and covenant not to sue.

Oracle v. Google

(Northern District of California). Lead counsel for Oracle America in an action for copyright and patent infringement based on Google’s inclusion of Java platform technology in the Android software platform and operating system.

Phigenix, Inc. v. Genentech, Inc.

(Northern District of Georgia). Lead counsel in patent infringement suit alleging that Genentech’s Kadcyla infringes a Phigenix patent.

Washington University v. Wisconsin Alumni Research Foundation

(District of Delaware). Lead counsel for Washington University in dispute involving proper valuation of a co-owned patent covering a blockbuster Vitamin D kidney disease treatment.

Elan Pharma International Limited v. Abraxis BioScience

(District of Delaware). Represented Abraxis BioScience in defending its lead product, Abraxane, against claims by Elan Pharmaceutical of infringing Elan’s patents for coated nanoparticles used to deliver paclitaxel for the treatment of metastatic breast cancer. This was the first nanotechnology patent case taken to jury trial. The case settled in 2011.

Vernor v. Autodesk

(Western District of Washington; Ninth Circuit). Represented Autodesk in case regarding software licensing and the first-sale doctrine under copyright law. Brought in to defend Autodesk after motion to dismiss was denied. On appeal, the Ninth Circuit reversed the district court and held that the first sale doctrine does not apply to licensed software.

Autodesk v. SolidWorks

(Northern District of California). Represented Autodesk in trademark infringement action relating to protectibility of Autodesk’s “DWG” mark. Obtained consent judgment of trademark validity as part of settlement.

Notal v. Carl Zeiss Meditec

(AAA/ICDR). Won nearly $10M award for plaintiff in ophthalmologic medical equipment dispute.

TAP v. QLT

(Northern District of Illinois). Settled case in damages phase after liability was established under previous counsel in resorbable polymer patent infringement action brought against client QLT, a biopharmaceutical company.

Discovery Communications, Inc. v. Amazon.com, Inc.

(District of Delaware). Represented Discovery Communications in a patent infringement suit against Amazon.com alleging

Overview
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Partner at Morrison & Foerster LLP

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Managing Partner, Singapore, Singapore at Morrison & Foerster LLP

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Chair & Chief Executive Partner at Morrison & Foerster LLP

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Managing Partner, Europe at Morrison & Foerster LLP

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Managing Partner at Morrison & Foerster LLP

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Co-Chair, Diversity Strategy Committee at Morrison & Foerster LLP

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Co-Chair, Global Corporate Department at Morrison & Foerster LLP

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Chair, Consumer Class Actions Practice Group at Morrison & Foerster LLP

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Co-Chair, Financial Services Practice Group at Morrison & Foerster LLP

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Co-Chair, Advanced Materials Group at Morrison & Foerster LLP

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Michael A. Jacobs
Partner, San Francisco at Morrison & Foerster LLP
Education
JD
Class of 1983

Located in New Haven, Connecticut, Yale Law School is one of the world’s premier law schools. It offers an unmatched environment of excellence and educational intimacy in the form of world renowned faculty, small classes, limitless opportunities for clinical training, and strong encouragement of public service. The Law School is small by design; its impact on the world is measured by its accomplished graduates and its ongoing scholarship and outreach through numerous centers and projects. For students, the experience is unparalleled. The faculty-student ratio supports a vast array of courses and opportunities for independent research and student-organized seminars. Students get practical training by representing real clients in clinics starting in their first year. Throughout, a spirit of collaboration reigns. All first-term courses are ungraded, and subsequent classes are graded honors/pass/low pass. Yale Law School is unique among law schools in that it produces leaders in all walks of life: distinguished deans and faculty members at law schools across the country and the world; industry CEOs and corporate counsels; founders of nongovernmental organizations and other nonprofit entities; entrepreneurs; government servants in federal, state, and local offices and the judiciary--just a few areas in which our alumni's talent and passion and dedication have made a difference. Among the School’s graduates are U.S. Presidents and Supreme Court Justices; and among its far-reaching projects, the Information Society Project and the China Center.

BA
Class of 1977

Stanford University, located between San Francisco and San Jose in the heart of California's Silicon Valley, is one of the world's leading teaching and research universities. Since its opening in 1891, Stanford has been dedicated to finding solutions to big challenges and to preparing students for leadership in a complex world.

Career History
Partner, San Francisco
Current

Morrison & Foerster is a firm of exceptional credentials. Their name is synonymous with a commitment to client service that informs everything that they do. They are recognized throughout the world as a leader in providing cutting-edge legal advice on matters that are redefining practices and industries.

Political Donations
$1,000
2008

Former Senator from New York

$250
2007

Minority Whip at Office of the Senate Minority Whip, Richard J. Durbin

$250
2006

Representative from New York's 16th Congressional District

Transactions
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St. Jude Medical LLC purchases MediGuide Ltd. from Elbit Systems Ltd.

Awards & Honors
2017
Best Lawyers - Best Lawyers in America
2017
LMG Life Sciences - Life Sciences Star
2016
Best Lawyers - Best Lawyers in America
Other Affiliations

Michael A. Jacobs is affiliated with Morrison & Foerster LLP

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