Michael J. Abernathy concentrates on patent, trade secret, and antitrust litigation. As co-leader of the firm’s IP disputes practice and IP life sciences practice, and member of the firm’s Advisory Board, Mike has first chair trial experience and is highly sought after by clients that face significant “bet-the-company” litigation. He has successfully tried cases to juries across the United States and has trial experience in Hatch-Waxman cases and Section 337 investigations in the US International Trade Commission.
IAM Patent 1000 described Mike as follows in its 2018 rankings: “A trial lawyer through and through, Abernathy masters the details of the law and the facts and his preparation is the opposite of superficial. His broad shoulders can support the weightiest of burdens, but he is keen on mentoring and giving experience to younger lawyers around him too – this is something many clients like to see.”
With 30 years of litigation experience, Mike frequently advises corporations on the strategic use of intellectual property assets, post grant review, licensing programs, the Hatch-Waxman Act, and patent due diligence issues. He also has litigated emergency injunction proceedings involving pharmaceuticals and medical devices, computer software, trademark counterfeiting, and industrial espionage.
Mike has been involved with a variety of technologies, including renal, infusion, and pulmonary devices; medical diagnostic systems; pharmaceuticals; biosimilars, image-processing systems; cellular networks; computer chips; microprocessing clocking; geographical information systems; vehicle tracking systems; network verification systems; stem cells; power tools; crude oil desalting; metrology systems; paper chemistry; security systems; automobile braking, steering, and sensor systems; network management software programs; computer interfaces; progressive gaming systems; and Internet-based business methods.
A frequent speaker, Mike has presented lectures on trial advocacy to the National Institute for Trial Advocacy, the Practising Law Institute, the International Trademark Association, the Northwestern University School of Law, the Bureau of National Affairs, PricewaterhouseCoopers National Expert Forum, and the National Business Institute. His topics include effective presentation of electronic demonstratives, use of electronically stored information under the Federal Rules of Evidence, and retention of technical and damages experts.
Lead trial counsel for Baxalta in a patent infringement action in the District of Delaware filed against Genentech, Inc. and Chugai Pharmaceutical Co., Ltd. This action alleges that Genentech and Chugai’s current use, sale, offer to sell within the United States and/or importation into the United States of HEMLIBRA infringes a Baxalta patent related to antibodies that bind FIX/FIXa and increase the procoagulant activity of FIXa. HEMLIBRA competes with Baxalta’s flagship product ADVATE.
Served as lead trial counsel for Praxair, Inc. in two-week ANDA trial against Mallinckrodt Pharmaceuticals involving 11 patents related to pharmaceutical product (INOMAX) and associated delivery system. The district court ruled that half of the asserted patents were invalid and the other asserted patents were not infringed, resulting in a complete victory for Praxair.
Served as lead trial counsel representing a patent owner Baxalta in the ITC in dispute regarding method of manufacturing recombinant factor VIII (ADVATE), a billion dollar pharmaceutical product. Successfully obtained summary determination of infringement before the final hearing. The case settled favorably after the ITC ruled in client’s favor on domestic industry on appeal and infringement.
Secured a defense victory as co-lead trial counsel for Sigma International (now Baxter Healthcare) in a patent infringement jury trial against CareFusion Corp. in the Southern District of California over occlusion sensors for infusion pumps. CareFusion had sought $171 million in damages and a permanent injunction.
Secured victory as lead trial counsel for Amazon.com in Certain Wireless Consumer Electronic Devices and Components Thereof, No. 337-ITC-853, where complainants sought an exclusion order against the Kindle Fire.
Served as lead counsel for Baxter Healthcare Corp. in patent litigation in the Western District of Texas involving methods for remote supervision and verification of pharmacy work. The court granted summary judgment after concluding that the asserted claims of the patent were invalid because the claims involved unpatentable subject matter.
Obtained a $17 million damages award in the Northern District of California for infringement of three patents related to hemodialysis machines as lead trial counsel for Baxter International Inc. in a patent infringement jury trial.
Served as co-lead counsel for Hexagon Metrology Inc. and TESA Technology in a successful settlement in a patent holder's attempt to obtain a preliminary injunction to enjoin the national roll-out of a probing system for coordinate measuring machines.
Served as lead counsel for International Game Technology (IGT) in a patent ownership jury trial in the District of Nevada. The case was successfully settled after the court indicated that it would likely grant IGT's motion for judgment of law upon close of the plaintiff's case.
Served as lead counsel for Robert Bosch LLC in a patent infringement case in the Eastern District of Michigan involving automotive breaking sensors that resulted in a favorable settlement.
Served as lead trial and appellate counsel in successful defense of multimillion dollar fraud and misrepresentation claims against Underwriters Laboratories Inc.
Served as lead intellectual property counsel for a European corporation's acquisition of a US-based medical device company owning more than 160 patents covering a variety of patient diagnostic and communication technologies.
Served as co-lead counsel for CorePharma LLC in defeating a patent holder's attempt to introduce a pharmaceutical for the treatment of kidney stones.
Served as lead counsel for Nestlé Prepared Foods Co. in successfully blocking a competitor's national roll-out of infringing products.
Served as lead counsel for Fruit of the Loom Inc. in obtaining a permanent injunction against a principal competitor's cross-border industrial espionage scheme.
DePaul University College of Law, 1982, J.D., With Honors
Benedictine University, 1979, B.A., Magna Cum Laude
US Supreme Court
US Court of Appeals for the First Circuit
US Court of Appeals for the Third Circuit
US Court of Appeals for the Fourth Circuit
US Court of Appeals for the Fifth Circuit
US Court of Appeals for the Seventh Circuit
US Court of Appeals for the Ninth Circuit
US Court of Appeals for the Eleventh Circuit
US Court of Appeals for the Federal Circuit
US District Court for the Eastern District of Michigan
US District Court for the Eastern District of Wisconsin
US District Court for the Northern District of Illinois
Awards and Affiliations
Faculty, National Institute for Trial Advocacy
Adjunct professor of clinical trial advocacy, Northwestern University School of Law
Recognized, IP Patent Star – Illinois, Managing Intellectual Property (2018)
Recommended, Industry focus – Healthcare – life sciences, The Legal 500 US (2017, 2018)