Michael 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, software, computer and networking systems, cloud computing, distributed data storage systems, AI, AR, VR, IoT, e-commerce, logistics systems, image processing, optics, virtual payment card transactions, payment processing systems, on-line banking, block chain, aeronautical, medical devices, mechanical systems and devices, bioinformatics, consumer electronics, green energy solutions, among others. 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, Post Grant Reviews, and Covered Business Method patent reviews.
Mr. Pavento's practice has a heavy focus on intellectual property and technology transactions, including: negotiating and drafting complex IP licensing agreements, development agreements, supply agreements, and other IP, software and technology agreements; conducting IP due diligence studies and competitive analyses in support of corporate mergers, acquisitions, IPOs and other transactions; negotiating IP aspects of M&A agreements; advising business leadership regarding IP risks and best practices.
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.
Manages patent prosecution matters for one of the world's leading software companies.
Representing the owner of a significant patent portfolio relating to mobile telecommunication technologies in defense of several inter partes patent reexamination proceedings.
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.
Advising multinational electronics client on an ongoing basis with respect to open source software compliance, auditing, and remediation efforts.
Lead IP counsel representing client in a $1B acquisition of a publicly listed company.
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.
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.
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).
The firm served as lead counsel on behalf of Cox Communications, which was accused of infringing a competitor’s patents relating to voice over IP technology. We obtained a jury verdict of no patent infringement of six patents and invalidity of two patents. Affirmed by the Federal Circuit. Verizon Servs. Corp. v. Cox Fibernet Va., Inc., No. 08-157 (E.D. Va. filed Jan. 11, 2008).
Insights View All
- Adversarial Patent Prosecution℠
- Asset Creation - Prosecution & Counseling
- Intellectual Property
- Intellectual Property Due Diligence
- Licensing, Transactions & Monetization
- Market Protection - Opinions & Dispute Avoidance
- Patent Due Diligence
- Patent Litigation
- Post-Grant Proceedings
- Technology Transactions
- Trade Secrets
Syracuse University College of Engineering M.S. (1997) Computer Engineering, cum laude
Syracuse University College of Law J.D. (1997) cum laude
University of Southern California B.S. (1994) Aerospace Engineering
Federal Circuit Court of Appeals
Georgia Court of Appeals
Superior Court of Georgia
U.S. Court of Federal Claims
U.S. District Court for the Northern District of Georgia
U.S. Patent and Trademark Office
American Bar Association, Member
American Intellectual Property Law Association, Member
Georgia State Bar Association, Member
Licensing Executives Society, Member
Syracuse University Alumni Club, Member
University of Southern California Alumni Club, Member
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