Michael J. Riesen

Partner / Atlanta

Michael is a Partner in the Intellectual Property Practice of Smith, Gambrell & Russell, LLP. Mr. Riesen also serves as Executive Director of SGR Labs.

  • Full Bio

    Michael Riesen focuses his practice on intellectual property, including portfolio management and diligence, domestic and international patent prosecution, agreements, patent litigation, trademark prosecution, copyright, and open source issues. Michael uses his technical background in material science, physics, electrical engineering, and computer science to assist a variety of clients in IP matters, and works with clients to quickly assess their cases and develop effective strategies. A former high school and college physics teacher, Michael capitalizes on his ability to understand complex and high-level scientific concepts and to effectively convey such concepts to inventors, counsel, judges, juries and examiners. He regards the relationships he forms with clients and organizations as relationships focused on commitment, value and responsiveness.

    Litigation

    • Has been involved in more than 20 patent suits and PTAB proceedings.
    • Worked closely with subject matter experts in developing non-infringement and invalidity strategies.
    • Involved in a challenge to validity for ineligible subject matter under 35 U.S.C. § 101 at the District Court and an appeal to the Federal Circuit.
    • Has participated Markman briefing/hearing and expert depositions in various jurisdictions Massachusetts, Connecticut, Texas, Pennsylvania, New York, and California.
    • Has participated in motion practice dealing with various issues under 35 U.S.C. §§ 101, 102 and 103, and 35 U.S.C. 112, paragraph 6.

  • Representative Experience

    • Worked with a Fortune 500 company to develop a patent landscape study and filing strategy relating to Internet-of-Things (IoT) and incorporation of data science analytics into product line.
    • Represents multiple universities across the country in matters relating to patent prosecution and litigation, contracts, licensing and export control. Manages patent families in optics, medical devices, image processing and other technologies from schools of engineering, medicine and applied physics.
    • Works with an emerging company in the merged reality and telemedicine industry, assisting with access and interactions with the United States Patent and Trademark Office (USPTO) and foreign counsel. Worked closely with the company as it progressed through initial funding and grant of first patent, remaining cognizant of the balance between development and appropriate allocation of funds to produce true value through intellectual property and an expanded international portfolio. Also balanced licensing issues between the company and the university licensor.
    • Performed due diligence, prepared opinions and performed prosecution work with in-house counsel and subgroups of inventors for a mass media and communications company. Involved in the management and oversight of company information, including patent preparation and communicating portfolio information to involved decision makers regarding strategic intellectual property.
    • Serves as senior manager on a large patent portfolio for a client in the plastics and material science industry. Works with numerous inventors from throughout the world and with multiple foreign filings contacts to facilitate client business and communication goals.
    • Worked with leading producer of optics, imaging and photonics technology in the preparation and filing of two petitions for inter partes review at the USPTO. Worked closely with two of the most recognized professionals in the field in construction of claims charts and argument of invalidity to present to the U.S. Patent Trial and Appeal Board.
    • Worked with an emerging company in the medical communication industry, assisting with international and domestic filing strategy for a patent portfolio. Also counseled on aspects of data privacy/security in HIPAA-compliant messaging.
    • Represented an automobile supplies company, assisting in the facilitation of company expansion into a new international market in India. Strategized regarding patent prosecution, including licensing, joint venture agreements, mergers and acquisitions, research agreements and due diligence. Worked closely with foreign and in-house counsel and inventors, and brainstormed and developed the company’s new business venture from the ground up.

  • Bar Admissions

    Florida
    Ohio
    Georgia
    U.S. Patent and Trademark Office
    U.S. Court of Appeals, Federal Circuit

  • Education

    Undergraduate
    • Clarion University of Pennsylvania

    Grad School
    • University of Toledo

    Law School
    • University of Toledo

  • Memberships

    • Birmingham Business Alliance (BBA)
    • Southeast Medical Device Association (SEMDA)
    • The Society of Cable Telecommunications Engineers (SCTE)
    • International Society for Optics and Photonics (SPIE)
    • The Optical Society (OSA)
    • Society of Vacuum Coaters (SVC)
    • Technology Association of Georgia (TAG)
    • The University of Toledo Alumni Association
    • TI:GER® Program: Mentoring current graduate and professional students as part of the joint entrepreneurial education program with Georgia Institute of Technology and Emory University.

  • Publications