Michael L. Kiklis
Partner
Tel (703) 413-2707

Michael L. Kiklis

Partner

Michael L. Kiklis focuses his practice on patent litigation as well as trials at the USPTO’s Patent Trial and Appeal Board.  He frequently handles high-stakes matters, having been involved in several cases in which over $1 billion was at stake.

Mr. Kiklis has twenty years of experience as an intellectual property attorney and has been involved in numerous intellectual property disputes, ranging from cross-licensing and pre-litigation negotiations to full-blown, bet-the-company litigations.  Mr. Kiklis has extensive experience in both enforcing his clients’ rights as well as defending his clients.  Before joining Oblon Spivak, he was an IP litigation partner at Akin Gump Strauss Hauer & Feld, LLP in the firm’s D.C. office.

With a strong background in computer science, Mr. Kiklis also has extensive experience in software patent matters. Prior to entering law school, he worked as a software developer for six years at some of the computer industry’s leading companies.

Mr. Kiklis is a frequent lecturer and author on cutting-edge intellectual property issues, including the Supreme Court’s patent law jurisprudence, patentable subject matter under 35 U.S.C. § 101, as well as the new contested proceedings at the USPTO’s Patent Trial and Appeal Board.  In fact, he is the author of The Supreme Court on Patent Law, which has been called “a great resource” that fills “a critical gap in our understanding of modern American patent law.”  He is also a co-author of the firm’s post-grant proceeding treatise.

Mr. Kiklis is also active in pro bono matters. In coordination with the International Senior Lawyers Project, he taught the first-ever intellectual property class in the LLM Program of the National University of Rwanda and served as the thesis advisor to several LLM students.

Representative Matters

Represented a software company in the successful enforcement of its patent against virtually an entire industry of over thirty companies—including Microsoft and IBM—in two patent litigations in the Eastern District of Texas, resulting in favorable settlements

Represented a major computer company in its landmark antitrust case against Microsoft, resulting in a $1.95 billion settlement

Co-counsel on the first Covered Business Method Patent Proceeding filed at the USPTO’s Patent Trial and Appeal Board.

Currently representing clients in several Covered Business Method Patent and Inter Partes Review proceedings before the USPTO's Patent Trial and Appeal Board

Represented a national organization of legal professionals as co-author of a Supreme Court amicus brief in Bilski & Warsaw v. Kappos

Represented a financial services company in defense of a claim of patent infringement on a business method patent, resulting in a favorable settlement

Represented a trade association as co-author of a Supreme Court amicus brief in Quanta Computer, Inc. v. LG Electronics, Inc.

Represented several large software/computer companies in cross-licensing negotiations with IBM and other high technology companies

Represented a large computer company as opinion counsel in defense of a software patent infringement case where over $1 billion was at stake; the plaintiff dropped its willfulness claim.

Listed as one of 2013’s IP Stars in the state of Virginia by Managing Intellectual Property.

Computer Science Distinguished Alumni Award given at the 30th anniversary celebration of Computer Science at Boston University Metropolitan College.

Recipient, U.S. Patent and Trademark Office Society's Rossman Award given to the author of the article in the Journal of the Patent and Trademark Office Society that makes the greatest contribution to the field of patents, trademarks or copyrights.

Publications and Presentations:

Publications:

  • “Is the Federal Circuit's CLS Bank v Alice Corp. Decision a Cry for Help from the Supreme court?” The Computer & Internet Lawyer, August 2013
  • “The America Invents Act:  New Tools for Challenging Patents,” The Computer & Internet Lawyer, June 2012
  • “Bilski v. Kappos : Back to 1981,” The Computer & Internet Lawyer, October 2010
  • “Bilski: Perhaps Not Much of a Game Changer After All,” The Metropolitan Corporate Counsel, August 2010
  • “Considering the Post-Seagate Landscape: The Role of the Advice of Counsel Defense to a Charge of Willful Patent Infringement,” The Computer & Internet Lawyer, May 2010
  • “Waive Farewell to Uncertainty: EchoStar Clarifies Scope of Waiver in Advice-of-Counsel Defense,” The Computer & Internet Lawyer, September 2006
  • “A Patent Saved is a Patent Earned: A Word of Caution for Software Patent Practitioners,” The Computer Lawyer, January 2000
  • “The Demise of the Mathematical Algorithm Rejection and the Emergence of the Utility-Based §101 Inquiry,” The Computer Lawyer, August 1999

Presentations:

  • Emasculating Patent Trolls; A Business Development Academy Course, August 2013
  • Battling Patent Trolls: Leveraging New Executive Orders, AIA and Other Tools; A Strafford Publications Webinar, July 31,2013
  • CLS Back v. Alice Corp.: Navigating Patent Eligibility of Software-Related Inventions Absent Clear Guidance; A Strafford Publications Webinar, July 10, 2013
  • USPTO Post-Grant Patent Trials 2013, PLI Conference.  March 4, 2013, Chicago
  • USPTO Post-Grant Patent Trials 2013, PLI Conference.  March 27, 2013, New York
  • USPTO Post-Grant Patent Trials 2013, PLI Conference.  April 15, 2013, San Francisco
  • "Prometheus Bound – Analyzing the Current Restraints on Patent Eligible Subject Matter," D.C. Bar Association, Intellectual Property Law Program, June 19, 2012, Washington, D.C.
  • "Are Ecommerce-Related Inventions Patent Eligible? Dealing with Uncertainty after the Remand of WildTangent," Intellectual Property Owners (IPO) Association's Webinar, June 14, 2012
  • “The America Invents Act:  New Tools for Challenging Patents,” Akin Gump’s CLE for In-house Counsel Series, April 18, 2012, New York City, NY
  • “The Use of Opinion of Counsel as Evidence in Patent Litigation,” ABA’s 25th Annual Intellectual Property Law Conference, April 9, 2010, Arlington, VA
  • “The Rules have Changed – New Strategies for IP Dispute Resolution in the U.S.,” LexisNexis 3rd Annual Conference on Dispute Avoidance and Resolution, October 13-14, 2008, Beijing, China
  • “Facilitating the Creation of an IP Strategy,” ACI’s Strategic IP Planning Conference, February 27-28, 2008, Scottsdale, AZ
  • “Waiver of Privilege After EchoStar, Seagate and Other Recent Cases,” George Mason University School of Law, Sixth Annual Symposium on Hot Topics in Patent Law, July 17, 2007
  • “Understanding the Implications of the Federal Circuit’s SanDisk v. STMicroelectronics Ruling,” Strafford Publications Teleconference, June 28, 2007
  • “Getting Your ‘IP House’ in Order: Protecting Existing IP and Using IP Assets to Increase the Company’s Worth,” ACI’s Technology IP Due Diligence Conference, June 21-22, 2007, San Francisco, CA
  • “Corporate Strategies for Patent Claim Drafting,” ACI’s Software IP Strategy Summit, February 19-21, 2007, Palo Alto, CA
  • “IP Risk Management,” Fordham University School of Law 14th Annual Conference on Intellectual Property Law & Policy, April 20-21, 2006
  • “IP & Antitrust in China,” Business Software Alliance High-Tech General Counsel Forum, October 2006, San Diego, CA.