Michael P. Sandonato

Partner
Sandonato Michael

Michael Sandonato is co-chair of Venable's IP Litigation - Technology Group. A seasoned trial lawyer, Michael has served as lead counsel in patent litigations in district courts across the country, before the U.S. International Trade Commission (ITC), and in arbitrations. He is equally adept at representing both patent owners and accused infringers. Some of the technologies Michael's litigation work has involved include digital cameras, laser toner cartridges, smartphones, dental imaging systems, graphical user interfaces, financial products, and electronic test equipment.

Michael has lectured on patent law at conferences around the world, and has spoken on panels with such notable individuals as the chief judge of the Court of Appeals for the Federal Circuit, the chief administrative law judge of the ITC, and judges from the Intellectual Property High Court in Japan and the IPR Tribunal of the Supreme People's Court of China.

Before joining Venable in 2018, Michael was a partner at the IP boutique firm Fitzpatrick, Cella, Harper & Scinto, where he chaired the firm’s Electronics and Computer Technologies Practice Group and served as a member of the Management Committee. 

 

Experience

Representative Matters

  • Served as lead counsel for Canon, enforcing patents on laser printer and copier toner delivery technology against the aftermarket, before the International Trade Commission (ITC) and in district courts across the country. Michael's work has led to four General Exclusion Orders and numerous district court injunctions. In a district court case in N.D. Ga. involving a key patent on a toner bottle technology for Canon's imageRUNNER® machines, the jury, following a 10-day trial, returned a verdict for Canon on all issues, including direct infringement, indirect infringement, and willful infringement, and awarded the full measure of damages sought. The court subsequently awarded Canon enhanced damages and a permanent injunction
  • Served as lead counsel for Prudential in S.D. Ohio, in a trade secret case in which Prudential was accused of wrongly acquiring and using alleged trade secrets to develop Legacy Protection Plus®, an optional death benefit rider sold with Prudential Premier® variable annuity products. Following more than three years of litigation, the court granted summary judgment in Prudential's favor, finding that no misappropriation had occurred
  • Served as lead counsel for Sirona Dental Systems (now Dentsply Sirona) in D. Del., enforcing six patents on CMOS imaging technology developed at NASA's Jet Propulsion Laboratory against competitors. Following a Markman order in which virtually all claim terms at issue were favorably construed and an order striking a key defense, a resolution was reached
  • Serving as lead counsel for Candid Care Co. in D. Del. and W.D. Tex. and before the Federal Circuit, defended against a competitor's patents on a telemedicine workflow. In the first case the Delaware Court invalidated the asserted patent under Section 101 on a motion to dismiss, which was subsequently affirmed on appeal. In the second case, the Texas Court transferred the case to Delaware, causing the plaintiff to unilaterally grant Candid a covenant not to sue to divest the Delaware court of jurisdiction
  • Served as lead counsel for Canon in a set of D. Del. actions brought by Intellectual Ventures, involving more than 20 patents on various technologies, including image sensors, digital cameras, scanners, and laser drivers. In one case, after defeating two patents on summary judgment, Michael served as lead trial counsel in two back-to-back jury trials on the remaining four, with the second resulting in a verdict of non-infringement. In another, Michael defeated four patents through Markman and summary judgment proceedings, before the case as to the remaining patents was resolved, just prior to trial
  • Served as lead counsel for Prudential in D.N.J., in a case in which a General Patent Corp. entity alleged infringement by Prudential-branded real estate websites. Following an order finding the asserted patent to be directed to an abstract idea under the Alice test, a resolution was reached
  • Serving as lead counsel for Dentsply Sirona in an E.D.N.Y. case, defended against a patent on an orthodontic bracket. Following a Markman hearing, the court determined that the patentee had disclaimed key subject matter. That ruling made it impossible for the patent owner to maintain its infringement assertions, resulting in a voluntary dismissal with prejudice

Representative Clients

  • Canon
  • Dentsply Sirona
  • Prudential

Insights

Credentials
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Education

  • J.D. Columbia Law School 1992
  • M.S.E.E. University of Southern California 1989
  • B.S.E.E. cum laude New York University Tandon School of Engineering 1987

Bar Admissions

  • Admitted in New York Only
  • U.S. Patent and Trademark Office

Court Admissions

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Fifth Circuit
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Western District of Wisconsin

Professional Memberships and Activities

  • Federal Circuit Bar Association (Vice Chair, Global Series Committee)
  • Litigation Counsel of America (Fellow, Trial Lawyer Honorary Society)
  • Fellow of the American Bar Association
 

Recognition
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Michael has an established reputation as "a great trial lawyer" (Chambers, 2021) who litigates "high-value disputes relating to technology" (Chambers, 2020). Clients also call him an "impressively bright and results-oriented advocate” with “a track record of success” (Client Choice Award, 2018). As one said, “In my 15 years of working with Mike, I and our executive team have been impressed by the professionalism, legal acumen, attitude, and client-focused approach to his work” (Managing Intellectual Property IP Stars, 2015).

  • The Best Lawyers in America, Litigation – Patent, 2015 – 2023
  • National Law Journal, Elite Boutique Trailblazer, 2018
  • Client Choice Award, Intellectual Property – Patents, New York, 2018 (Exclusive recipient)
  • Chambers USA, Intellectual Property: Patent, New York, 2016 – 2022
  • Managing Intellectual Property, IP Stars, 2013 – 2020, 2022
  • IAM Patent 1000, The World’s Leading Patent Professionals, 2013 – 2022
  • IAM Strategy 300, The World’s Leading IP Strategists, 2009 – 2013
  • Legal 500
    • Patent Litigation, Full Coverage, 2012 – 2013, 2015 – 2022
    • Patent Prosecution, Utility and Design Patents, 2012 – 2016, 2018
  • Super Lawyers, New York Metro, 2009 – 2021
  • The Burton Awards, Burton Award for Legal Achievement, 2008 (Presented for “High Court to Rule on Territorial Reach of Patents,” originally published in the January 22, 2007, issue of the National Law Journal)