Overview
Michael D. Specht is a director and chair of Sterne Kessler’s Electronics Practice 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.
Mike 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.” Mike has served as counsel in nearly 100 IPRs, CBMs, and PGRs, with more than 50 representations on behalf of petitioners, and more than 40 appearances on behalf of patent owners. Whether challenging or defending patents before the PTAB, Mike’s lead counsel track record is superior to the PTAB averages on the basis of challenged claims instituted and instituted claims cancelled at final written decision.
Mike has served as an advisor to associates participating in the PTAB’s Legal Experience and Advancement Program (LEAP), which provides associates with training and development opportunities in PTAB proceedings, including oral argument.
Mike’s 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.
Mike has his J.D. from Georgetown University Law Center cum laude, his M.S. in electrical engineering from Purdue University and his B.S. in electrical engineering from Case Western Reserve University highest honors, IEEE Most Outstanding Electrical Engineering Student.
Representative Matters
Patent Trial and Appeal Board (“PTAB”) Litigation
- 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.
District Court
- 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)
Education
- J.D., Georgetown University Law Center, cum laude
- M.S., Electrical Engineering, Purdue University
- B.S., Electrical Engineering, Case Western Reserve University, highest honors, IEEE Most Outstanding Electrical Engineering Student