Michael S. Lee

Partner

Bio:

Michael S. Lee represents clients in all phases of patent law including development and management of U.S. and international intellectual property assets, licensing, establishing technology positions for emerging companies and teaming with litigation counsel to support complex domestic and foreign patent litigation.

Prior to entering private practice, Mr. Lee served as a Patent Examiner with the U.S. Patent & Trademark Office where he presided over the prosecution of hundreds of patent applications in a variety of diverse technical fields including Gas Turbine Engines and Engine Controls, Fluid Handling and Fluid Control Devices, Optical and Magnetic Storage Media, Vapor Contact Drying, Automobile Engines and Transmissions. Because of his intimate knowledge of patent procedures and the inner workings of the U.S. Patent & Trademark Office, he often serves as a resource for other patent attorneys and has been asked to intervene in cases where other firms have encountered difficulties during prosecution.

In addition to the mechanical arts, Mr. Lee has extensive experience in both wireline and wireless networks. He served as counsel to BellSouth and Cingular, a joint venture between BellSouth and Southwestern Bell Corporation that eventually became AT&T Wireless. During this time, he managed very large, active and complex dockets in both wireline technology (PSTN, SS7, AIN and other advanced network technologies) and wireless technology (GSM, CDMA, TDMA, 4G LTE, MSC, WAP, SMS, GPS integration, micro-billing and mobile payments).

Other wireless companies have also retained Mr. Lee. For example, InfoCom Research, the advanced R&D division of NT&T DoCoMo (the largest wireless carrier of Japan), requested advice in the newly emerging field of business method patents after the State Street Bank decision. As the request of InfoCom, Mr. Lee traveled to Japan and spoke at seminars organized by InfoCom. Mr. Lee also provided strategic IP advice to InfoCom and DoCoMo on the emerging intersection of mobile technology and mobile financial transactions.

Mr. Lee has significant litigation experience, in particular, the ability to  resolve patent litigations quickly, prior to trial. In one case, Mr. Lee was retained as lead defense counsel by a refrigerant manufacturer. After conducting an investigation, where he discovered unpublished, commercial sale prior art in China, Mr. Lee was able to secure a dismissal with prejudice during the pleadings stage on very favorable terms to his client. In another case, Mr. Lee was retained as first chair litigation counsel by a national auto parts retailer against a Patent Assertion Entity (PAE) that had also sued three other national retailers. During the course of this case, Mr. Lee led joint defense conferences and negotiated joint defense agreements to coordinate strategy with the other co-defendants. Mr. Lee was able to remove his client from the litigation during dispositive motions practice without an admission of infringement and without the payment of any damages to the PAE.

 

 

Education:

• B.S., Mechanical Engineering, Lehigh University, 1990
• J.D., The Columbus School of Law, The Catholic University of America, cum laude, 1995
• Received several national awards during law school, including the American Jurisprudence Award in Jurisprudence.

Admissions:

• Registered Patent Attorney
• Maryland
• District of Columbia
• Virginia

Contact Info:

f: 301 365 9101
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Michael S. Lee

Partner