Michael P. Kahn, Partner, Intellectual Property

Michael P. Kahn

Partner

Areas of Focus

Michael P. Kahn, Partner, Intellectual Property

Michael P. Kahn

Partner

mkahn@akingump.com

Areas of Focus

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Biography
  • Chief focus is patent infringement and trade secret litigation in district courts across the country.
    • Lead counsel on large-scale, strategic patent litigation cases for major players in the pharmaceutical, biotechnology and medical device space.
    • Strategic advisor to innovative companies in a broad range of sectors, including life sciences, medical devices, engineering, consumer products and communications.
    • Michael is candid with his clients at every phase of a dispute, ensuring informed decision-making at critical junctures.
  • Advises investment professionals on intellectual property-related matters, including internal policies and information management, and external opportunities, such as direct investment, valuation, diligence, case management and trial practice.
    • Designs and implements cutting-edge investment strategies for investors in active litigation and portfolios of future litigation.
    • Active focus on the evolving landscape surrounding generative artificial intelligence, machine learning, and other emerging technologies in the context of investment fund policies and procedures.
    • Michael is a key partner in Akin’s artificial intelligence & machine learning group.

Michael is a Chambers USA-ranked lead trial lawyer with significant victories at virtually every stage of litigation. With a global practice, Michael is a full-service strategic advisor for prominent life sciences and high-tech companies. Building upon long-term relationships of trust, Michael is called upon to take the lead on business-critical matters involving IP and related complex commercial disputes.

With new precedent-setting decisions coming down in 2023 and 2024, the IP litigation landscape continues to evolve. Against this backdrop, Michael serves as lead counsel and strategic advisor on numerous matters impacted by those recent decisions. Further, Michael helps clients understand the IP implications of major legislation and regulations such as the Inflation Reduction Act (IRA) and President Biden’s AI Executive Order.

Michael proactively evaluates and addresses patent infringement and trade secret claims in the context of his clients’ market position and business goals. Working closely with in-house attorneys and executives, he wields his substantial skill as a strategist to manage complex cases to successful business resolutions or trial wins.

Michael has significant experience in all aspects of intellectual property litigation, including successes in district courts across the country, the International Trade Commission (ITC), the Patent Trial and Appeals Board (PTAB) and numerous alternative dispute resolution forums.

Michael is also called upon regularly for IP advisory matters outside of active litigation, including transactional diligence, investment assessment and litigation management.

In addition to other awards and accolades, Michael was ranked by Chambers USA as a leading practitioner in Intellectual Property: Patent–New York, 2023, described as a “strong, talented partner who presents arguments really well” and named a Client Service All-Star by BTI Consulting Group, which recognizes lawyers who have been identified by their clients as “delivering the absolute best levels of client service.”

Michael sits on the firm’s Partnership Admissions Committee, the Executive Hiring Committee and the New York Diversity, Equity & Inclusion Council.

Representative Work

IP Litigation

  • Represents Boston Scientific in post-trial proceedings relating to patent infringement claims brought by the Board of Regents of the University of Texas System and TissueGen Inc. The claims at issue are directed to biodegradable fiber implants with immiscible phases.
  • Represents Signature Plumbing Specialties in a patent infringement case brought by Kohler Inc. in the Southern District of New York (SDNY). The plaintiff originally asserted seven design patents and alleged infringement by multiple Signature products sold well before Kohler’s priority dates. After early motion practice, Kohler withdrew certain of its claims, maintained others, and added business tort allegations. The case is in its early stages.
  • Represented Boston Scientific successfully in a series of multi-front patent and trade secret litigations against Nevro Corp. relating to spinal cord stimulation technology in the district of Delaware. The cases involved affirmative patent and trade secret claims asserted by Boston Scientific, counterclaims for patent infringement asserted by Nevro and parallel petitions for inter partes review (IPR) in both directions before the PTAB. The court scheduled trials for October 2021, January 2023 and October 2023. The jury in the 2021 trial returned a verdict finding Nevro liable for willful patent infringement and awarding Boston Scientific $20 million in damages. The case settled favorably in August 2022, prior to the next-scheduled trials.
  • Represented Boston Scientific successfully in connection with PTAB proceedings brought by Micro-Tech (Nanjing) Co. Ltd. and Micro-Tech Endoscopy USA Inc. Micro-Tech petitioned the PTAB to initiate IPR proceedings over 15 Boston Scientific patent claims directed to hemostatic clips. After Boston Scientific submitted its Patent Owner Preliminary Response, the PTAB denied institution of review for all challenged claims, giving Boston Scientific a complete victory.
  • Represented 3M Company successfully in a series of enforcement matters concerning fraudulent offers for sale and counterfeit sales of goods misbranded as 3M personal protective equipment, including its notorious N95 respirators. This included securing a victory for 3M in the Central District of California, obtaining a default judgment and permanent injunction, along with other relief against a company selling counterfeit personal protective equipment (PPE), including N95 respirators.
  • Represented 3M Company successfully in defense of a three-patent infringement case filed by BD Technology Partners in the District of Minnesota. The technology related to smart air filters. The case settled favorably for 3M.
  • Represented Endava Inc. and nine other directly- and indirectly-related entities successfully against allegations brought by Plusgrade Inc. related to an airline seat upgrade platform. Plusgrade filed a complaint in the SDNY alleging copyright infringement, a Lanham Act violation, misappropriation of trade secrets under the Defend Trade Secrets Act of 2016 (DTSA) and New York common law, unfair competition and tortious interference. In March 2023, the court granted our clients’ motion to dismiss all claims and entered judgement in our favor.
  • Represented EnChroma successfully in patent litigation related to lenses used for color vision correction. The matter was filed in the Western District of Pennsylvania as a declaratory judgment by accused infringer, Eyenavision, Inc. The case settled favorably for EnChroma in March 2023.
  • Represented plaintiff 3M Company successfully in a patent infringement dispute against competitor Kerr Corporation involving 3M’s innovative dental composite materials. After successive victories for 3M in connection with Markman proceedings and Daubert motions, the case settled in December 2019.
  • Represented plaintiff/complainant 3M Company successfully in a three-patent dispute involving 3M’s groundbreaking shielded ribbon cable technology against Amphenol Corp. and related respondents. 3M filed a district court action in Delaware and an investigation before the ITC. Amphenol countered with four IPR petitions challenging 3M’s patents. Just weeks prior to trial, Amphenol entered into a consent order addressing all accused products and terminated the IPRs.
  • Represented Sorenson Communications and CaptionCall LLC successfully as lead counsel against primary competitor Ultratec/CapTel Inc. in a series of district court, federal circuit and PTAB matters over Ultratec’s patents concerning telecommunications for the deaf and hard-of-hearing. The Akin team took over this series of matters during the post-trial and appellate phases following two district court jury trials. Since then, in a series of nine IPRs, the PTAB found all of Ultratec’s asserted claims in the first trial unpatentable. The Akin team also successfully challenged and rendered unpatentable all claims of three additional Ultratec patents asserted in subsequently filed but stayed district court litigations. Ultratec appealed to the Federal Circuit, where a three-judge panel unanimously affirmed the PTAB decisions in Sorenson’s favor. The Supreme Court denied Ultratec’s petition for certiorari and the matters concluded as a complete victory for our clients.
  • Represented a declaratory judgment defendant/counterclaim-plaintiff Openfolio successfully against Albert Corporation in breach of contract, unfair competition and misappropriation of trade secrets litigation concerning websites and applications for managing personal financial portfolios. Client Openfolio’s claims were among the first brought under the Defend Trade Secrets Act of 2016; the case settled favorably for the client in the midst of dispositive motion practice that would undercut all of Albert’s claims.
  • Represented 3M Company successfully in patent infringement litigation, PTAB and appellate proceedings concerning aerosol spray adhesive formulations. Our team was among the first to move successfully to dismiss a complaint for lack of venue based on the Supreme Court’s TC Heartland. The PTAB also determined in parallel that all but two claims in Westech’s asserted patent are unpatentable. Westech dropped its appeal during the briefing period.

"Michael is a strong, talented partner who presents arguments really well."
Chambers USA, 2022

Education
  • J.D., Fordham University School of Law, 2001

  • B.A., University of Pennsylvania, 1998

Bar Admissions
  • New York

Recognitions
  • Chambers USA, Leading Practitioner in Intellectual Property: Patent–New York, 2022-2024; Described as a “strong, talented partner who presents arguments really well.”
  • The Legal 500 US, Patents: Litigation (Full Coverage), 2021-2024.
  • Managing IP, IP Stars – Patent Star, 2023.
  • LMG Life Sciences, Leading Life Sciences Lawyer, 2021; Life Sciences Star, 2022.
  • IAM Patent 1000—The World’s Leading Patent Professionals, Leading Private Patent Litigator in New York, 2021, 2024.
  • BTI Consulting Group, Client Service All-Star, 2020, 2024.
  • Akin, New York Office, Partner Recognition Award, 2018.
  • Immigration Equality, Safe Haven Award, Recognition for Excellence in Pro Bono Representation, 2013.
Affiliations and Public Service
  • Advisory Board Member, The Johns Lyng Group USA.
  • Member, Board of Trustees, Northern Westchester Hospital.
Speeches and Publications
  • Presenter, New Challenges for Private Fund Managers, Akin AI Summit, February 8, 2024.
  • Moderator, The Next Frontier of Investing with Generative AI, MFA Network Miami, January 31, 2024.
  • Moderator, Protecting Data Assets in the Age of AI, MFA Data & Technology 2023, September 19, 2023.
  • Presenter, Understanding Impact of the Inflation Reduction Act on Pharmaceutical Litigation, American Conference Institute’s 18th Annual Paragraph IV Disputes Conference, April 19, 2023.
  • Moderator, How to Develop and Implement A Crisis-Resistant IP Strategy, IPO Annual Meeting, September 21, 2020.
  • Presenter, A Unified Claim Construction Standard: Panacea or Peril? IPO Litigation Committee Meeting, May 16, 2019.
  • Presenter, Addressing the Impact of a Uniform Claims Construction Standard, American Conference Institute’s 13th Annual Paragraph IV Disputes Conference, April 29, 2019.
  • Presenter, How to Build a Successful Biotech, YJP CEO Life Sciences and Pharmaceutical Symposium, November 13-14, 2018.
  • Presenter, Divided Infringement: From Akamai to Lilly, American Conference Institute’s 4th Annual Paragraph IV Disputes Master Symposium, September 20, 2016.
  • Presenter, The Medicines Company v. Hospira, Inc. IPO Litigation Committee Meeting, August 19, 2016.
  • Presenter, Sweeping Developments in Patent Reform Agenda: The Innovation Act and the Patent Act—A Trial Lawyer’s Perspective, live webcast, The Knowledge Congress, May 16, 2016.

Insights and Achievements

      Publications | Newsletters

      August 29, 2024

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        July 12, 2024

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            Publications | Newsletters

            August 29, 2024

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              July 12, 2024

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