Michael A. Siem Image

Michael A. Siem

Partner

Goldberg Segalla

Michael A. Siem is a partner with Goldberg Segalla and a nationally renowned intellectual property litigator and registered patent attorney with a focus on complex and high-value patent litigation. He represents both patentees and alleged infringers in various federal district courts, and litigates cases in many technological areas, including pharmaceuticals, medical devices, consumer electronics, chemical processes, computer networks, and biotechnology. In the trademark realm, Michael has defended against claims of trademark and trade dress infringement, along with handling proceedings in the Trademark Trial and Appeal Board. Michael’s experience also includes handling trademark litigation under the Anticybersquatting Consumer Protection Act with regard to the use and registration of a website domain name. He also has significant experience in drafting and filing patent and trademark applications. Equipped with a deep understanding of pharmaceutical litigation related to intellectual property and the Hatch-Waxman Act, Michael also maintains a focus on matters related to Abbreviated New Drug Applications (ANDAs). In his patent litigation practice Michael has been lead trial counsel in patent litigation claims, and his trial experience includes arguing motions, conducting direct and cross-examinations of witnesses, and presenting arguments at Markman hearings. In addition to his patent litigation trial experience, Michael has argued at the Virginia Supreme Court, the Eleventh Circuit Court of Appeals, and other state and federal district courts.

Michael dedicates a significant portion of his time to pro bono matters. In 2010, he obtained a reversal and new sentencing hearing in the Virginia Supreme Court for a client who had received a death sentence. He was also lead counsel in a challenge to the constitutionality of lethal injection in the State of Georgia, and obtained an indefinite stay of execution on October 18, 2007 for his client. In recognition of these efforts, Michael was a recipient of the 2008 Thurgood Marshall Award for Capital Representation, given by the Committee on Capital Punishment of the Association of the Bar of the City of New York.

Recent Articles by Michael A. Siem

Expert Declaration Opposing Section 101 Motion to Dismiss for Patent Invalidity Deemed Not a Written Instrument

Patent eligibility challenges under 35 U.S.C. § 101 have been effective tools at the pleading stage for parties defending allegations of patent infringement. Defendants often attempt to avoid the costs of litigation by filing a motion to dismiss under Federal Rule of Civil Procedure (“FRCP”) 12(b)(6), seeking to invalidate the asserted patent(s) on the grounds that the claims are directed to ineligible subject matter — such as an “abstract idea.” Previously, a key tactic for plaintiffs to overcome such “Section 101 motions” was by amending the complaint and annexing an expert declaration. Recently, however, this strategy has been called into question due to a recent decision in Marble VOIP Partners LLC v. Zoom Video Communications, Inc.,