Mind + Muscle

technical minds + legal muscle

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Sterne Kessler Goldstein Fox
Michael V. Messinger

Mind + Muscle

Michael V. Messinger

Director

 

Mr. Messinger is a director in the Electronics Group and the leader of the firm's Alternative Energy and Climate Change practice area. He handles complex patent matters involving inter partes and post-grant review, reexamination, reissue and appeals. He works with company managers, directors and employees to identify and leverage intellectual property assets. He is a leader in the area of fast-track patent examination in the United States and abroad.

Mr. Messinger has extensive experience prosecuting U.S. and international patent applications and developing strategic patent portfolios. He has written and prosecuted numerous patent applications including those related to computer networking (Internet, World-Wide Web, Java technologies), communications protocols, browsers, geographical information systems, high-speed optical communications, optoelectronics, graphics processing, data mining, voice-over-IP, cryptography, and multi-processor computer architecture.  Hundreds of patents he helped obtain have been successfully enforced or acquired.

Mr. Messinger has also provided infringement and validity analysis in opinion work and in support of litigation for computer-related patents, including having served as a patent expert in an EDVA litigation.

Prior to joining Sterne Kessler, Mr. Messinger worked as a patent agent.  He was a patent examiner for over six years in Group 2500 (Radiant Energy) at the United States Patent and Trademark Office. He examined patent applications and granted U.S. patents covering a variety of optical electronic circuits and systems including video camera inspection systems, scanners, fiber optic sensors, imaging CCD arrays, and photosensitive semiconductor junctions.  Mr. Messinger regularly publishes and speaks on emerging topics in patent strategy and practice in the United States and abroad.

Mr. Messinger taught for several years at the Patent and Trademark Office University and Northern Virginia Community College in the areas of patent law, intellectual property law, and business organization.  He is an adjunct professor of Patent Licensing at Georgetown Law.  He also teaches Patent Office Litigation at George Mason School of Law - the first course of its kind in the nation. He serves as the Virginia area coordinator for the Cyprus Friendship Program.

Additionally, Mr. Messinger is a contributing author of Patent Office Litigation, Second Edition, published in 2017, and the two-volume set Patent Office Litigation, published in 2012 by Thomson Reuters Westlaw. The first edition focuses on the new contested proceedings under the America Invents Act, while the second edition provides a fresh and comprehensive exploration of these proceedings. Both books examine how the proceedings interact with other aspects of patent procurement and enforcement, and deliver practical analysis and advice.

Publications
  • "Four Tips for IP Savvy VCs," Michael V. Messinger and Krishan Thakker, VC List, July 2016
  • "Covering new terrain: Early lessons from the first wave of PTAB appeal to the federal circuit," Michael Messinger and Deborah Sterling Ph.D., Inside Counsel, May 2016 
  • "Lessons on PTAB-Proofing Patent Portfolios," Michael V. Messinger and Deborah Sterling, Ph.D., Inside Counsel, February 2016
  • "RPI or RIP? How failing to list a real-party-in-interest can kill a post-grant proceeding," Deborah Sterling, Ph.D. and Michael V. Messinger, Inside Counsel
  • "Patent Appeal Board Limits Litigants' Bites of the Apple," Deborah Sterling, Ph.D., and Michael V. Messinger, Inside Counsel, December 2015
  • "Limited bites of the apple - ThePTAB's discretion under 35 USC § 325(d)*," Deborah Sterling, Ph.D. and Michael V. Messinger, Inside Counsel, December 2015
  • "Environmentally Sustainable Patent Strategies," Michael V. Messinger, Law360, September 2015
  • "Versata v. SAP I and II: Who's Your Daddy?" Michael V. Messinger, Sterne, Kessler, Goldstein & Fox, August 2015
  • "Energy Management Patent Triggers a Covered Business Method Review," Michael V. Messinger and Lestin Kenton, Sterne, Kessler, Goldstein & Fox, January 2015
  • "Observations on Covered Business Method Patent Review," Michelle K. Holoubek and Michael V. Messinger, World Intellectual Property Review,June 2014
  • "Another Patent Acceleration Option: USPTO Initiates Glossary Pilot Program," Michael V. Messinger and Salvador M. Bezos, Sterne, Kessler, Godlstein & Fox, March 2014
  • "The Surprise Impact of the America Invents Act of Wind Companies' Return on Investment for Patent Expenditures," Michael V. Messinger, Winder Power & Energy Solutions, June 2012
  • "Patent Litigation at the PTO Under the America Invents Act of 2011," Michael V. Messinger, Jon E. Wright, and Eldora L. Ellison, BNA's Patent, Trademark & Copyright Journal, September 2011
  • "Patent Litigation at the USPTO Under the America Invents Act of 2011," Michael V. Messinger, Jon E. Wright and Eldora L. Ellison, Ph.D., Sterne, Kessler, Goldstein & Fox, September 2011
  • "Winning a Non-Obviousness Case at the Board of Patent Appeals and Interferences," Michael V. Messinger, Sterne, Kessler, Goldstein & Fox, July 2010
  • "Making Waves on the Ocean EnergyPatent Landscape," Michael V. Messinger and Richard B. Almon, Clean Tech Law and Business, September 2009
  • "CleanTech Open Patent Strategies: Reexamination," Michael V. Messinger, CleanTechies Blog, April 2009
  • "BPAI Reaches Beyond Bliski to Machines," Michael V. Messinger, Jon M. Strang, and LuAnne M. DeSantis, Intellectual Property Today, March 2009
  • "Patent Strategies in a Green Environment," Peter A. Jackman, Michael V. Messinger & Richard B. Almon, World IP Review, February 2009
  • "Strategies for IP Savvy CEOs," Mike Messinger and Tim Doyle, Washington Smart CEO, October 2007
  • "The BPAI Returns to Graham v. John Deere," Michael V. Messinger and Jon E. Wright, IP Law360, July 2007
  • "Consider a Prosecution History Disclaimer for Every Continuation Application," Michael V. Messinger and Jon E. Wright, Sterne, Kessler, Goldstein & Fox, July 2007
  • “Indispensable Tips for IP Savvy VCs," Michael V. Messinger and Timothy A Doyle, American Venture, January 2007
  • Admissions
      • District of Columbia

      • United States Court of Appeals for the Federal Circuit

      • United States Patent and Trademark Office

  • Education
    • J.D., Georgetown University

    • B.S., Physics, Duke University

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