MICHAEL I. KATZ

MICHAEL I. KATZ
Partner
Michael I. Katz, a partner in the Irvine office, is a seasoned litigator highly regarded for
his combination of creativity, strategic judgment, and courtroom prowess. He has broad
experience litigating complex cases in both federal and state courts involving intellectual
property, unfair competition, breach of contract, business torts, and class actions.
Mr. Katz has successfully litigated patent infringement and trade secret matters involving
technology related to semiconductors, fiber optics, packet switching, networking
equipment, communications, medical devices, consumer electronics, and race car
engines. He also represents clients in trademark and licensing disputes in the toy, video
and entertainment industries.
Before joining Thomas Whitelaw, Mr. Katz spent 15 years at Morrison & Foerster LLP,
where he was a partner in its Los Angeles and Irvine offices and a member of its
Intellectual Property and Consumer Class Action Litigation Groups.
Mr. Katz began his career as an associate at Simpson Thacher & Bartlett, after serving as
a law clerk to the Honorable Barbara B. Crabb, Chief Judge of the United States District
Court for the Western District of Wisconsin.
Mr. Katz‟ clients include DIRECTV, Cricket Communications, Mindspeed, and Argus
Healthcare.
Representative Cases
PATENT LITIGATION

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On The Go, LLC v. AT&T Mobility, LLC, et al. (N.D. Ill.): Represent Cricket
Communications in patent infringement action involving handset-enabled
electronic commerce.

WiAV Solutions LLC v. Motorola, Inc., et al. (E.D. Va.): Represent the patent
owner, Mindspeed Technologies, Inc.., in a patent infringement lawsuit involving
eight of its speech coder patents.

MEC v. Mindspeed Technologies, Inc. (C.D. Cal.): Lead lawyer representing
Mindspeed against patent infringement assertion involving ARM‟s pipelined
processor technology.

Beckton Dickinson v. Omron (D. Del.): Member of a team that obtained a
dismissal of all claims for lack of standing in a patent infringement lawsuit
involving infrared sensing technology for use in ear thermometers.

Angeion Corp. v. Cardiac Pacemakers, Inc. (D. Minn.): Member of a team that
prevailed on summary judgment of patent infringement involving implantable
heart defibrillator technology, and obtained a $35 million settlement.
TRADE SECRET LITIGATION

Gateway v. Financial Title Co. (Cal. Sup. Ct., Los Angeles County): Member of
a trial team that successfully defended one of the largest corporate employee
raiding cases in U.S. history in a three-month trial involving allegations of
widespread theft of trade secrets and improper hiring of over 350 employees. The
case settled after trial for less than three percent of damages sought by plaintiffs.

MRV Communications v. Zonu, Inc. (Cal. Sup. Ct., Los Angeles County):
Obtained a complete dismissal of a lawsuit alleging theft of trade secrets related
to fiber optic components after prevailing on a motion for terminating sanctions.

GlobeNet Software v. Herbalife International (Cal. Sup. Ct., Los Angeles
County): In an action involving allegations of trade secret misappropriation and
copyright infringement, obtained dismissal of all claims against Herbalife and a
permanent injunction in its favor on counterclaims.
COPYRIGHT, TRADEMARK AND RIGHT OF PUBLICITY

Quest Software v. DIRECTV Operations, LLC (C.D. Cal.): Defend DIRECTV in
action for copyright infringement and breach of software license agreement.

LumaSense v. Neoptix, Inc. (N.D. Cal.): Defended Neoptix against claims of
trademark infringement, cybersquatting and trade secret misappropriation.

Bemelmans Estate v. DIC Entertainment (Cal. Sup. Ct., Los Angeles County):
Represented a major toy company in a license dispute involving rights in the
„Madeline‟ character.
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
Hebrew University v. Electronic Arts (Ninth Circuit Court of Appeals):
Represented Hebrew University in a right of publicity dispute involving the
alleged misuse of Albert Einstein‟s likeness in a video game.
BREACH OF CONTRACT AND LICENSE DISPUTES

Disney Enterprises, Inc. v. Bombardier, Inc. (AAA): Represent Disney in a
significant royalty dispute involving a twenty-year license agreement related to all
aspects of monorail and peoplemover technology.

Probitas v. Mitsubishi Chemical: Represented Mitsubishi on a claim for
indemnification under an APA related to blood products that did not qualify for
FDA approval. Obtained a settlement in which Probitas withdrew its claim.

IBS Interprit, Inc. v. DIRECTV Operations, LLC (S.D. Cal.): Represent
DIRECTV in dispute over a software development agreement.

Southern California Edison v. SMUD (Cal. Sup. Ct., Yolo County): Represented
the SMUD in a dispute over a long-term power sale agreement.
CLASS ACTIONS

In Re McDonald’s Promotional Games Litigation (MDL and Coordinated
California Actions): Represented a major marketing company in thirty class
actions involving the theft of million dollar prizes from McDonald‟s promotional
games “Who Wants to Be a Millionaire” and “Monopoly.” Settled all claims with
client paying no money. Assisted client in responding to FBI investigation.

Canoga Park v. Argus Health Company (Cal. Sup. Ct., Los Angeles County,
Complex Part): Lead lawyer representing a prescription drug claim processor in a
class action lawsuit seeking over one billion dollars in statutory damages.
Obtained dismissal of all claims on motion to dismiss and prevailed on appeals
through denial of Petition for Review with the California Supreme Court.

Koebke v. San Bernardo Golf & Country Club (Cal. Supreme Court):
Represented country club on an appeal involving alleged discrimination under the
Unruh Act.
Publications/Speaking Engagements
Mr. Katz is a frequent speaker on intellectual property, electronic discovery, and ethics.
His publications include:

“The „Independent Development‟ Defense Under the Uniform Trade Secrets Act”
in The Lawyer’s Brief (April 2008)

Uniform Trade Secrets Act Preemption: An Obscure Doctrine Gets Its Day in
Court” in IP Counselor (January 2008) and Cyberspace Lawyer (October 2007)
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Admissions
State Bars of California and New York
United States District Courts
All Districts in California,
Eastern District of Virginia
Southern District of New York
District of Delaware
Northern District of Illinois
Courts of Appeals for the Ninth and Federal Circuits.
Awards
Mr. Katz is a Fellow of the Litigation Counsel of America, a trial lawyer honorary
society.
Mr. Katz has been selected as a “Superlawyer” for Southern California every year from
2004 through 2010, and also for inclusion in the 2008 through 2010 Corporate Counsel
editions of Superlawyers.
In 2000, Mr. Katz was awarded the ACLU Foundation of Southern California Pro Bono
Civil Liberties Award for his work on First Amendment law.
Education
Mr. Katz received is JD from New York University School of Law in 1992 and his AB,
cum laude, from Harvard College in 1987.
Community/Charitable Involvement
Mr. Katz frequently handles pro bono class action litigation on homelessness issues.
Mr. Katz was the lead lawyer in Cervantes v. International Security Inc., a class action
brought on behalf of all homeless persons on Skid Row in Los Angeles to enjoin
violations of their civil liberties, and in Furman v. Hammons, a class action brought on
behalf of disabled, low income persons in New York City seeking reimbursement for
covered costs under Medicaid. Mr. Katz served as a board member with the Inner City
Law Center in Los Angeles.
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