Riesen, Michael J.

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

Full Bio
Michael Riesen is an IP and entertainment attorney, a Solicitor (England and Wales), and a registered U.S. patent attorney. Michael focuses his practice on intellectual property and entertainment, including IP portfolio management and diligence, domestic and international patent prosecution, agreements, patent litigation, trademark prosecution, copyright management, and transfer, litigation, and open source issues. Michael uses his technical background in material science, physics, electrical engineering, and computer science to assist various 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 understanding complex and high-level scientific concepts and effectively communicating 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/Diligence:
- Has been involved in more than 20 patent suits, and PTAB post-grant proceedings, and EPO oppositions.
- Works with SGR Labs to conduct IP clearance, IP landscapes, and competitive analysis.
- Works closely with testifying and non-testifying 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
Representative Experience:
- Worked with a Fortune 500 company to develop a patent landscape study and filing strategy relating to Internet-of-Things (IoT) and incorporating of data science analytics into the 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 the first patent, remaining aware of the balance between development and appropriate allocation of funds to produce actual 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 managing and overseeing company information, including patent preparation and communicating portfolio information to involved decision-makers regarding strategic intellectual property.
- Serves as senior manager on an extensive patent portfolio for a client in the plastics and material science industry. Works with numerous inventors worldwide and with multiple foreign filings contacts to facilitate client business and communication goals.
- Worked with a 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 the 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.
- Performed open source audits and coordinated third-party vendors for code review. Conducted in-house seminars and assisted with the development of open-source policies for various corporate entities.
- Reviewed participation agreement in view of changing distribution channels.
Michael graduated with a B.S. in Physics from the Clarion University of Pennsylvania and obtained a Masters (M.S.E.) in Engineering from the University of Toledo with a focus in Artificial and Machine Learning. Michael graduated from the University of Toledo College of Law, cum laude, where he served as President of the Intellectual Property Section and the Student Bar Association.
Bar Admissions

U.S. Patent and Trademark Office
U.S. Court of Appeals, Federal
England and Wales (U.K. Solicitor)
European Patent Office
Supreme Court of Georgia
Supreme Court of Ohio
Education
Undergraduate
- Clarion University of Pennsylvania
Grad School
- University of Toledo
Law School
- University of Toledo
Memberships
- Georgia Lawyers for the Arts
- Georgia Intellectual Property Alliance (Founding Member)
- Georgia PATENTS
Publications
Other Publications
Media Mentions
- Smith, Gambrell & Russell Co-Hosts Four-Part Webinar Series, “Economy of Entertainment” Beginning April 21

Michael J. Riesen