Michael A. Oakes

Michael handles complex civil disputes, with a focus on patent litigation and other intellectual property and technology-related matters before federal district courts and the US International Trade Commission (ITC). IAM Patent has said he “possesses talents in contentious matters across a range of sectors” (2024) and called him “a savvy litigator proficient at handling diverse technologies, who calms nerves when infringement issues loom” (2022). He has experience with patents in a variety of fields, including automotive and mobility, semiconductors and electronics, software, computer networking and Internet technology, biotechnology and pharmaceuticals, medical devices, and nuclear manufacturing technology. He previously served as co-head of the firm's intellectual property practice.

He has represented companies in litigation regarding complex technology outsourcing agreements and advises clients on liability issues related to the use of technology and the Internet, including issues related to cloud computing, online sweepstakes, and related marketing programs.

Michael also counsels clients on data security and privacy issues. He is experienced in handling the investigative and legal response to network intrusions and data breach events and has represented clients in class action litigation and regulatory investigations involving claims arising out of these incidents.

• Lead trial counsel for a data security company asserting multiple patents relating to cryptography and access control against multiple Fortune 100 defendants. After a week-long jury trial against one defendant, obtained a verdict finding all of the asserted patents valid and infringed.
• Lead counsel for a Fortune 50 retailer as a Respondent in an ITC investigation involving 11 patents related to LED lighting circuits and control systems, implicating over 100 accused products. Secured a complete victory after a five day trial, with the Commission affirming the Administrative Law Judge’s determination of no violation of Section 337 for all asserted patents.
• Lead counsel for a Fortune 50 retailer in a patent infringement action related to LED string lighting in the Central District of California. The court granted summary judgment of invalidity due to anticipation, despite the USPTO finding the patent valid over the same prior art in an inter partes review filed by another party.
• Represented a leading Internet company in a jury trial in the Southern District of Texas relating to claims that the company infringed three streaming media patents. Case settled favorably during trial.
• Represented an automotive manufacturer in the Southern District of Texas against claims that its manufacturing processes infringed a high speed laser welding patent. The court dismissed plaintiff’s claims on summary judgment following a favorable claim construction ruling.
• Represented a major electronics company in a four-week jury trial in the District of New Jersey relating to claims that the company infringed three semiconductor memory patents. The National Law Journal's 2007 Defense Hot List. Highlighted the verdict
• Represented a manufacturer seeking an injunction against a competitor arising out of trade secret misappropriation and patent infringement claims in the Western District of Virginia. Case settled favorably after the court granted motion for a preliminary injunction.
• Represented a major international bank and payment processor victimized by network security breach and theft from ATM network during investigation and subsequent litigation.
• Represented an international retail chain following a network intrusion. Coordinated internal investigation and represented company i) in obtaining dismissal of multiple class action lawsuits and ii) in response to FTC inquiry into data security practices.
• Advised multiple clients on legal issues arising out of credit card skimming incidents.
• Represented several companies in assessing risks associated with moving to cloud computing environments.

• Ranked Bronze for Patent Litigation in Washington, DC in the IAM Patent 1000 (2022-2024), Intellectual Asset Management
• Recommended for Trademarks: Litigation (2021-2022), Trademarks: Non-Contentious (2021-2022), Patents: Licensing (2020-2021), Patents: Litigation (Full Coverage) (2019-2020), and Patents: Prosecution (2019), Legal 500 United States