Michael Pavento

Michael S. Pavento focuses his practice on intellectual property law. He advises established companies and start-up ventures in a wide range of intellectual property matters, including the procurement and exploitation of intellectual property rights and the management of intellectual assets.

Mr. Pavento is a registered patent attorney whose areas of core technical competence include: telecom, computers and networking systems, software, e-commerce, virtual payment card transactions and payment processing systems, on-line banking, mechanical systems and devices, bioinformatics and business methods. He regularly evaluates patent rights and renders opinions with respect to invalidity, infringement and freedom-to-operate issues and design-around options. He also regularly prepares and prosecutes domestic and international patent applications and manages domestic and international patent portfolios. He has extensive experience handling and settling patent disputes and litigation matters.

Mr. Pavento has handled dozens of inter partes and ex parte patent reexamination proceedings, inter partes Reviews, and covered business method patent reviews.

Mr. Pavento has extensive experience negotiating and drafting complex intellectual property licensing agreements and other technology transfer and development agreements, as well as M&A agreements. He regularly advises clients on transactional matters involving intellectual property and has performed countless intellectual property due diligence studies and competitive analyses in support of corporate mergers, acquisitions, IPOs and other transactions.

In addition, Mr. Pavento has significant expertise in open source software licensing. He has helped clients develop open source usage policies and implement compliance programs. He manages large-scale open source code audits and routinely advises clients with respect to compliance and remediation issues.

Mr. Pavento also prepares and prosecutes applications for state and federal trademark registrations, renders trademark clearance opinions and advises clients as to trademark usage and enforcement strategy. He counsels clients regarding protection and enforcement of copyrights and prepares applications for federal copyright registrations. He was recognized in 2012 and the two years immediately preceding as a Georgia “Rising Star” in the area of Intellectual Property by Super Lawyers Magazine.

Experience:

• Represented Smith & Nephew Endoscopy-Andover in a patent infringement litigation brought by Karl Storz Endoscopy-America Inc. that included several patents directed to systems for controlling operating room equipment. Case settled. Karl Storz Endoscopy-Am., Inc. v. Stryker, Inc.,No. 07-02702 (W.D. Tenn. filed Nov. 2, 2007).
• Provides strategic patent counseling services to Red Hat Inc., the most recognized open-source software company in the world. Analyzes and renders legal opinions with respect to numerous patents owned by its competitor, as well as conducts due diligence investigations and advises the company in connection with proposed acquisitions of third-party patent portfolios. Drafts and negotiates patent license agreements, patent purchase agreements and other IP agreements.
• Over the past several years, has drafted and/or negotiated the majority of IP agreements entered into by the client, working closely with in-house IP counsel and business leaders in connection with the same; successfully defended multiple patent infringement cases brought against the company.
• Representing some of the largest global companies in their efforts to challenge third party patents through post-grant trials proceedings at the United States Patent Office.
• Representing the owner of a significant patent portfolio relating to mobile telecommunication technologies in defense of several inter partes patent reexamination proceedings.
• Represents Global Green Power, Inc. in corporate and intellectual property matters relating to the production of electricity generators powered by alternative energy sources.
• Provides patent procurement and counseling services to a world-leading provider of wireless technology and services. Works with the company’s technical personnel and in-house legal counsel to identify and strategically protect the company’s innovations, conducts patent due diligence and clearance analyses.

Education:

• Syracuse University College of Law, J.D. (1997)cum laude
• Syracuse University College of Engineering, M.S., Computer Engineering (1997) cum laude
• University of Southern California, B.S., Aerospace Engineering (1994)

Admissions:

• Georgia (1997)

Court Admissions:

• U.S. Patent Bar
• U.S. District Court for the Northern District of Georgia
• Superior Court of Georgia
• Georgia Court of Appeals
• U.S. Court of Federal Claims