Overview

Patent litigator Michael Amon helps large multinational companies across industries defend and prosecute intellectual property rights at trial and on appeal. He represents clients in district courts and appellate courts, post-grant proceedings, and TTAB opposition and cancellation hearings.

Michael’s practice encompasses all aspects of patent litigation, from discovery through trial, including motion practice, claim construction, expert witness selection and preparation, and overall trial strategy. He advises on ways to leverage IP portfolios and the tactical use of litigation to achieve business goals.

His experience runs the gamut, covering wide-ranging technologies with a focus on medical devices, chemical-related patents, pharmaceuticals, electrical engineering, computer science, and mechanical engineering-related innovations. He has favorably resolved cases involving everything from computer hardware and software to radio frequency identification (RFID) technology and from medical devices and chemical composition technology to golf balls and voting machines.

Because he has both asserted and defended IP-related claims, Michael brings an uncommon perspective in advising on and executing litigation strategies. Delivering convincing arguments grounded in the facts, he uses litigation tactically, making sure results will align with his client's goals.

Michael is most proud of his work for GlaxoSmithKline in which he and a Fish team successfully preserved GSK’s patent rights in a life-changing drug GSK spent years of research and more than a billion dollars to create and bring to market. 

Beyond the courtroom, Michael helps clients plan for the future. He evaluates the strength and weaknesses of their patents, vulnerability to infringement, possible redesigns of products to avoid infringement, and the benefits of strategic licensing, acquisitions, and sales of IP assets.

He enjoys the excitement of learning new things daily and working with incredibly brilliant people. Clients consider him bright, creative, engaging, and personable. They appreciate his ability to see the whole picture from all sides and his skill in helping them build, manage, and protect their innovations.

Michael is the vice office managing principal of Fish's San Diego office. He teaches a course on intellectual property law and patent litigation at the University of San Diego School of Law. Before joining Fish, Michael clerked for the Honorable James F. Stiven (2002-2003) and the Honorable Rudi M. Brewster (2003-2004) of the U.S District Court for the Southern District of California.

A first-generation American born to South American parents, Michael spoke Spanish before English. He keeps his culture alive speaking Spanish at home to his children and actively engaging in Hispanic organizations.

Experience

Therabody v. DJO – DJO was sued by Therabody, who alleged trade dress and patent infringement. Specifically, Therabody claimed DJO infringed its trade dress rights, infringed six design patents and two utility patents, and accused DJO of unfair competition. Michael was part of the team that successfully negotiated a low six figure settlement for DJO in the early stages of the litigation, avoiding significant litigation costs for his client, without any liability finding.

GlaxoSmithKline v. Teva and Glenmark – GlaxoSmithKline brought a patent infringement lawsuit involving GSK’s highly successful drug Coreg, used to treat congestive heart failure and hypertension. By utilizing a novel patent infringement theory, the Fish team proved that Teva willfully induced infringement of GSK’s patent. After several days of trial, but only a half day of deliberations, the jury returned a verdict against Teva, finding that Teva had willfully infringed GSK’s patent and awarded GSK $235 million in damages. The jury also rejected Teva’s multiple invalidity defenses.

Warsaw Orthopedic v. NuVasive, Inc. – Represented NuVasive, Inc. in a series of patent infringement lawsuits filed by Warsaw and its Medtronic affiliate related to spinal access systems, spinal implants, fixation, and biologics.  Mr. Amon was part of the team that successfully petitioned the Federal Circuit to vacate the $101 million damages verdict Warsaw obtained at trial.  In addition, Mr. Amon was involved in a series of inter partes review petitions that succeeded in invalidating several of Warsaw’s asserted patents.

NuVasive, Inc. v. Globus Medical, Inc. – Represented NuVasive, Inc. against Globus regarding Globus’s infringement of NuVasive patents related to medical devices and methods for spine surgery.  Mr. Amon argued claim construction and summary judgment, and was instrumental in positioning NuVasive to negotiate a favorable settlement with Globus.

St. Jude Medical, et al. v. Volcano Corp. – Defended Volcano Corp. in patent litigation and jury trial related to pressure sensing guide wires used to diagnose heart problems. At trial, jury found two St. Jude patents invalid, two not infringed; a fifth patent was declared not infringed by the court on the eve of trial.

Nicholas Colucci v. Callaway Golf Co. — No. 08-CV-288 (E.D. TX.) Successfully defended Callaway Golf at trial against claims of patent and trade dress infringement as to certain golf club products manufactured and sold by Callaway Golf. Tried to a jury in March 2010. The jury found for Callaway Golf on no literal infringement of plaintiff’s asserted patent, and no infringement of plaintiff’s alleged trade dress rights. Post trial motions pending.

Baxter Healthcare Corp and DEKA Prods. Ltd. Partnership v. Fresenius USA, Inc. et al. — (07-1359 (N.D. Cal.) Successfully represented Fresenius at trial against claims of patent infringement related to peritoneal dialysis automated cyclers manufactured and used by Fresenius in the United States. The case was tried to a jury in July 2010. The jury returned a verdict of no infringement in Fresenius’s favor.

Callaway Golf Co. v. Acushnet Co. – No. 06-91 (D. Del.) – Represented Callaway Golf in two-week trial asserting that Acushnet’s popular Titleist Pro V1 and Pro V1x golf balls infringe four Callaway Golf patents on golf ball construction. Tried to jury verdict in December 2007. Acushnet conceded infringement; jury found for Callaway Golf on validity of all four patents. Published at 523 F. Supp 2d 388 (D. Del. 2007).

Data Encryption Corporation v. Microsoft Corp. – No. CV 05-05531 (C.D. Cal.). Part of the team that defended Microsoft against patent infringement allegations related to data encryption technology. Obtained favorable ruling of non-infringement on summary judgment.

AVID Identification Sys., Inc. v. Philips Semiconductors Inc. – No. 2:04-cv-183 (E.D. Tex.). Part of the trial team that represented AVID in two-week trial asserting patent infringement (3 patents) and Lanham Act claims relating to RFID transponders and readers. Obtained favorable mid-trial settlement from two defendants and a complete jury victory against the other two defendants, including a finding of willful infringement and a damages award of over $6 million.

Stonebreaker v. Medical Management Int’l, Inc. – No. GIC 830293 (Cal. Sup. Ct.). Part of the trial team that represented Stonebreaker and AVID in trial asserting unfair competition under California Code Section 17200 and the Lanham Act. Obtained very favorable mid-trial settlement that included recovery of damages and a stipulated permanent injunction against the defendant.

Professional associations

  • J. Clifford Wallace American Inn of Court
  • American Bar Association
  • Board member, San Diego Volunteer Lawyers Project
  • Hispanic National Bar Association

Pro bono activities

  • Works on multiple pro bono matters ranging from asylum requests to homelessness issues.