Michael P. Sandonato
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
Michael served as Lead counsel for Canon in a N.D. Ga. case, enforcing a key patent on Canon's toner bottle technology for its imageRUNNER copy machines. Following a 10-day trial, the jury 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.
Michael served as Lead counsel for dental technology leader Sirona Dental Systems (now Dentsply Sirona) in a D. Del. case, enforcing, six patents on CMOS imaging technology developed at NASA's Jet Propulsion Laboratory. 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.
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 2 patents on summary judgment, Michael served as lead trial counsel in two back-to-back jury trials on the remaining 4, with the second resulting in a verdict of non-infringement. In another, Michael defeated 4 patents through Markman and summary judgment proceedings, before the case as to the remaining patents was resolved just prior to trial.
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 web sites. Following an Order finding the asserted patent to be directed to an abstract idea under the Alice test, a resolution was reached.
Lead counsel for Canon in a series of investigations in the ITC, enforcing patents on Canon's laser toner cartridge technology. Over the course of those proceedings, Michael secured 2 separate General Exclusion Orders for his client.
Representative Clients
- Canon
- Dentsply Sirona
- Prudential
Insights
Credentials
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
- New York
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)
- American Bar Association
Recognition
Michael has an established reputation for litigating "high-value disputes relating to technology" (Chambers, 2020). He has been praised by clients as a "very strategic thinker" who is "extraordinarily good on his feet" (Chambers, 2019) and for his "excellent demeanor in front of judge and jury" (Chambers, 2018). 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).
- Listed in The Best Lawyers in America, Litigation – Patent, 2015 - 2020
- Named an Elite Boutique Trailblazer, National Law Journal, 2018
- Exclusive recipient, Client Choice Award, Intellectual Property – Patents, New York, 2018
- Listed in Chambers USA, Intellectual Property: Patent, New York, 2016 - 2020
- Recognized in IP Stars, Managing Intellectual Property, 2013 - 2020
- Included in The World's Leading Patent Practitioners, IAM 1000, 2013 - 2019
- Included in The World's Leading IP Strategists, IAM 250/300, 2009 - 2013
- Listed in Legal 500, Patent litigation, full coverage, 2012 - 2013, 2015 - 2020; Patent prosecution, utility and design patents, 2012 - 2016, 2018
- Listed in Super Lawyers: New York Metro Edition, 2009 - 2019
- Recipient, Burton Award for Legal Achievement for "High court to rule on territorial reach of patents," 2008 – originally published in the January 22, 2007 issue of The National Law Journal