Mind + Muscle

technical minds + legal muscle

Bracket
Sterne Kessler Goldstein Fox
“Mike has proven to be an exceptional IP attorney, and he gets results.  I recommend him without hesitation."  

- Joe Mazzarella
Senior VP, Chief Legal Counsel
Mutualink

   

“We were impressed with the quality of the Sterne Kessler team from their relevant expertise in our field to their creative, thoughtful approach to defend our company in a patent lawsuit related to directory assistance services."

-Brian Roberts
Former Chief Financial Officer
Jingle Networks

   

"We have worked closely with Mike to develop and implement our IP Management Plan.  We have been impressed with Sterne Kessler's patent expertise combined with their firm grasp of telecommunications and our technology."

-Parham Momtahan
Former VP of Advanced Technologies
Bridgewater Systems

Michael D. Specht

Mind + Muscle

Michael D. Specht

Director

 

Mr. Specht is a director in the firm and is the Practice Group Leader of the firm’s Electronics Group. 

He has a unique combination of over twenty-five years of telecommunications, electronics and Internet-related technical, legal, and business development experiences. His practice spans high value patent prosecution and inter partes matters, including Patent Trial and Appeal Board ("PTAB"), district court, and International Trade Commission ("ITC") litigation. His extensive patent prosecution and technical experiences provide a formidable advantage in inter partes proceedings. Additionally, he counsels clients on the development and implementation of intellectual asset management plans to maximize the economic potential of their intellectual property through portfolio development, licensing, and litigation strategies.

Mr. Specht has long been a leader in post grant proceedings before the U.S. Patent and Trademark Office, such as ex parte reexaminations, inter partes reexaminations, inter partes reviews ("IPR"), covered business method reviews ("CBM"), and post grant reviews ("PGR"). He was the co-creator and editor of the award-winning website, www.reexaminationcenter.com, which was the most sought out industry source for reexamination decisions and analysis. He subsequently was a contributing author to the seminal treatise, Patent Office Litigation and is also a contributing author to Patent Litigation Strategies Handbook Third Edition 2014 Cumulative Supplement, "Patentability Challenges at the U.S. Patent and Trademark Office. Additionally, he was recognized by Docket Navigator as one of the top PTAB attorneys in 2014. He has an impressive PTAB litigation track record. Specifically, when representing patent owners in IPRs, not one claim in a patent he has defended as lead counsel has been cancelled. When representing petitioners in IPRs as lead, he has received institution for every claim challenged. He has managed and/or served as lead counsel for over fifty PTAB Litigation matters.

His primary areas of technical experience include telecommunications networks, broadband communication systems, wireless communications, GPS location-based services, Signaling System 7 ("SS7"), VoIP, communications protocols, e-commerce and Internet applications, graphic processors, and automotive technologies.

Prior to joining the firm, he co-founded and served as President and General Counsel of OnLine Living, a company providing high speed Internet and web services to residents of apartment communities. He led the company's efforts to secure venture capital and debt financing, managed legal affairs and directed the technology team. He was responsible for architecting and deploying the company's broadband wired and wireless network and web services. He began his career as an electrical engineer at Bell Communications Research ("Bellcore"), a world renowned research and development laboratory supporting the Bell System telecommunication companies. At Bellcore, he developed switching system technical requirements, conducted field performance analysis, led multi-disciplinary network operations reviews of the local telephone company networks and co-managed the SS7 product.

Representative Patent Trial and Appeal Board ("PTAB") Litigation Matters

­ Inter partes review of U.S. Patents No. 7,986,426 (IPR2013-00302, Ricoh Americas Corporation and Xerox Corporation v. MPHJ Technology Investments LLC, technology involves networked copiers) – successfully had all claims that were being enforced cancelled.

Inter partes reviews of U.S. Patents No. 8,488,173 (IPR2014-00538) and 7,477,410 (IPR2014-00539) (Ricoh Americas Corporation, Xerox Corporation and Lexmark, Inc. v. MPHJ Technology Investments LLC, technology involved networked copiers) – successfully had all claims that were being asserted cancelled on three separate grounds.

­ Inter partes reviews of U.S. Patents No. 7,860,222 (IPR2014-01278 and IPR2014-01282) and 7,805,457 (IPR2014-01283) (Global Tel Link v. Securus Technologies, Inc., technology involves prison communication monitoring and data analysis systems) – successfully had IPRs instituted against all claims in both patents, which are involved in co-pending litigation. Awaiting final written decisions.

­ Inter partes Review of U.S. Patent No. 6,89,332 (IPR2015-00323) (LG Electronics, Inc. v. Advanced Micro Devices, technology involves integrated circuit performance) – successfully defended patent, which is involved in co-pending litigation with PTAB denying institution of the IPR.

­ Post grant review of U.S. Patent No. 8,929,525 (PGR2015-00014) (Global Tel Link v. Securus Technologies, Inc., technology involves video communication systems for prisons) – prepared and filed PGR, awaiting institution.

Representative District Court Matters

­ Voxathon LLC v. Volkswagen Group of America, Inc. (E.D. Tex.) (co-lead counsel, 2015) (Technology involved automotive caller id interface);


­ Intellectual Capital Consulting, Ltd., v. Audi AG Audi of America, LLC, Audi Of America, Inc., Volkswagen Ag, and Volkswagen Group of America, Inc. (E.D. Tex.) (Co-lead counsel, 2015) (Technology involved smartwatches.);


­ Digital Air Inc. v. Volkswagen Group of America, Inc. (C.D. Cal.) (co-lead counsel, 2014) (Technology involved video production techniques);


­ Asentinel, LLC v. Anchorpoint, Inc. et al. (W.D. Tenn) (co-lead, 2010) (Technology involved telecommunication invoice processing systems.)


­ Grape Technology Group and kgb USA v. Jingle Networks, Inc. (D. Del.) (co-lead counsel, 2010) (obtained jury verdict in favor of defendant Jingle Networks in infringement action involving directory assistance technology)

  • Representative Matters

      Representative Patent Trial and Appeal Board ("PTAB") Litigation Matters

      ­ Inter partes review of U.S. Patents No. 7,986,426 (IPR2013-00302, Ricoh Americas Corporation and Xerox Corporation v. MPHJ Technology Investments LLC, technology involves networked copiers) – successfully had all claims that were being enforced cancelled.

      Inter partes reviews of U.S. Patents No. 8,488,173 (IPR2014-00538) and 7,477,410 (IPR2014-00539) (Ricoh Americas Corporation, Xerox Corporation and Lexmark, Inc. v. MPHJ Technology Investments LLC, technology involved networked copiers) – successfully had all claims that were being asserted cancelled on three separate grounds.

      ­ Inter partes reviews of U.S. Patents No. 7,860,222 (IPR2014-01278 and IPR2014-01282) and 7,805,457 (IPR2014-01283) (Global Tel Link v. Securus Technologies, Inc., technology involves prison communication monitoring and data analysis systems) – successfully had IPRs instituted against all claims in both patents, which are involved in co-pending litigation. Awaiting final written decisions.

      ­ Inter partes Review of U.S. Patent No. 6,89,332 (IPR2015-00323) (LG Electronics, Inc. v. Advanced Micro Devices, technology involves integrated circuit performance) – successfully defended patent, which is involved in co-pending litigation with PTAB denying institution of the IPR.

      ­ Post grant review of U.S. Patent No. 8,929,525 (PGR2015-00014) (Global Tel Link v. Securus Technologies, Inc., technology involves video communication systems for prisons) – prepared and filed PGR, awaiting institution.

      Representative District Court Matters

      ­ Voxathon LLC v. Volkswagen Group of America, Inc. (E.D. Tex.) (co-lead counsel, 2015) (Technology involved automotive caller id interface);


      ­ Intellectual Capital Consulting, Ltd., v. Audi AG Audi of America, LLC, Audi Of America, Inc., Volkswagen Ag, and Volkswagen Group of America, Inc. (E.D. Tex.) (Co-lead counsel, 2015) (Technology involved smartwatches.);


      ­ Digital Air Inc. v. Volkswagen Group of America, Inc. (C.D. Cal.) (co-lead counsel, 2014) (Technology involved video production techniques);


      ­ Asentinel, LLC v. Anchorpoint, Inc. et al. (W.D. Tenn) (co-lead, 2010) (Technology involved telecommunication invoice processing systems.)


      ­ Grape Technology Group and kgb USA v. Jingle Networks, Inc. (D. Del.) (co-lead counsel, 2010) (obtained jury verdict in favor of defendant Jingle Networks in infringement action involving directory assistance technology)

  • Admissions
      • District of Columbia

      • Virginia

      • United States Court of Appeals for the Federal Circuit

      • United States Patent and Trademark Office

      • United States Supreme Court

  • Education
    • J.D., Georgetown University cum laude

    • M.S., Electrical Engineering, Purdue University

    • B.S., Electrical Engineering, Case Western Reserve University highest honors, IEEE Most Outstanding Electrical Engineering Student

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