Michael N. MacCallum

Member

Michael MacCallum is a member of Dickinson Wright’s Intellectual Property practice group. He focuses his practice on domestic and international intellectual property protection, counseling, and enforcement. Having clients ranging from Fortune 100 corporations to independent inventors, Mike has a depth of experience in all aspects of patent protection and enforcement. His focus is on mechanical and software technologies, ranging from artificial intelligence and machine learning, to MEMS devices, sporting goods, and transmission components. 

In addition to patent preparation and prosecution, Mike has successfully navigated his clients through inter partes review procedures at the Patent Office, as well as litigation resulting from such procedures. He has acted as lead attorney on a plethora of inter partes review proceedings as both the petitioner and patent owner.  Mike also has guided his clients through trade secret disputes.

Education & Credentials

Education

Wayne State University Law School

J.D.
  • cum laude

Michigan State University

B.S., Mechanical Engineering

Bar Admission

  • Michigan

Acknowledgements

  • Intellectual Asset Management
    • “IAM Patent 1000 Recommended Individual,” 2020
  • Michigan Super Lawyers
    • “Rising Star,” Intellectual Property, 2016-2020
  • Michigan Lawyers Weekly
    • “Up and Coming Lawyer,” 2018
  • DBusiness Magazine
    • “Top Lawyer,” 2021

Prominent Assignments

Prosecution Matters:

  • Serves as patent counsel and managing attorney for multiple global Tier-1 automotive suppliers on the prosecution, development, and strategy relating to their patent portfolios. Mike leads a team of lawyers and manages portfolios that relate to infotainment systems, instrument clusters, safety components, HVAC systems, drive trains, sensory systems, and autonomous machine learning technologies. Mike also routinely prepares invalidity and freedom-to-operate opinions.
  • Serves as patent counsel for a Tier-1 automotive supplier on drafting and prosecuting domestic patent applications relating to automotive. Technologies include bearings, transmission components, and drive train systems. Works alongside in-house teams and team members to advise the client on global prosecution strategies. Also counsels clients with freedom-to-operate opinions.

Post-Grant Matter:

  • STIHL Incorporated et al v. ElectroJet Technologies, Inc. (PTAB): Lead Counsel defending ElectroJet relating to inter partes review petitions led by STIHL. Case No. IPR2018-00018, IPR2018-00020.  Successfully defended client’s patent portfolio.
  • Ford Motor Company v. Paice LLC (PTAB): Represented Ford during the pendency of the 22 inter partes review proceedings challenging the validity of hundreds of claims across five separate patents.  Patent Trial and Appeal Board held 273 patent claims were unpatentable.

Litigation Matters:

  • Maxchief v. Plastic Development Group (Settlement – E.D. Michigan): Lead counsel for Defendant, Plastic Development Group (PDG) in a patent infringement matter regarding blow-molded tables. Successfully transferred the case to E.D. Michigan shortly after the Supreme Court’s decision in TC Heartland. Also served as counsel to PDG during inter partes review proceedings to challenge the asserted patent’s validity. The Patent Trial and Appeal Board instituted on all grounds for all challenged claims. The case settled favorably shortly after transferring to PDG’s home forum and institution of the inter partes review.  Case No. 2:17-cv-12662
  • WP Banquet, LLC et al. v. Target Corporation et al. (Settlement – C.D. California): Lead counsel for furniture manufacturer Plastic Development Group and retailer Target accused of infringing four patents. Successfully moved to sever and stay the case for Plastic Development Group’s customer Target. Managed to secure a favorable settlement on behalf of Plastic Development Group shortly thereafter. Case No. 2:16-cv-02082
  • ElectroJet Technologies, Inc. v. STIHL Incorporated (E.D. Virginia) – Representing Electrojet in patent lawsuit relating to engine timing control. Case No. 2-17-cv-00224

Professional Involvement

  • American Intellectual Property Law Association
  • Intellectual Property Owners Association
    • U.S. Patent Office Practice Committee
  • Michigan Intellectual Property Law Association
  • State Bar of Michigan
  • Wayne State University Law School Patent Procurement Clinic
    • Adjunct Professor

Court Admissions

  • U.S. Patent and Trademark Office
  • U.S. District Court, Eastern District of Michigan
  • Michigan Supreme Court

Publications/Presentations

  • Co-Author, PTAB Establishes Criteria Governing Follow-On Petitions for AIA Post-Grant Proceedings
  • Co-Presenter, “2017 IP Litigation and PTAB Year in Review,” Webinar, February 2018
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