Michael A. Tomasulo, Partner

Mr. Tomasulo’s practice focuses on high stakes intellectual property litigation and counseling for a wide array of technology clients. Mr. Tomasulo has been a practicing patent litigator since 1994, and has played a significant role in more than 30 patent litigations. His cases have ranged from representing patent owners in large, complex patent litigation to defending clients in multi-defendant patent troll litigation. He has appeared in patent cases throughout the country, including in all California district courts, the Eastern District of Texas, the Northern District of Illinois, and the District of Delaware. Mr. Tomasulo has trial experience before the U.S. International Trade Commission.

Mr. Tomasulo has represented clients in litigation matters related to a wide range of technologies, including video games, semiconductors, flash memory controllers, Internet search and database management technology, software patents, gamma ray inspection equipment, high-brightness LEDs, computer hardware emulation, mechanical equipment, medical devices, yoga pants, and biotechnology.

In addition to his patent litigation experience, Mr. Tomasulo has served as lead counsel or co-lead counsel in numerous trade secret, copyright, and trademark litigations, as well as in two breach of contract arbitrations, including an international dispute litigated simultaneously in Canada and in the United States before the International Center for Dispute Resolution.

Mr. Tomasulo also donates his time as a court-appointed attorney settlement officer for patent litigation matters in the Central District of California. This experience has proved invaluable in helping him achieve early, cost-effective settlements for his clients.

Mr. Tomasulo’s litigation experience includes:

Entertainment software publisher

• Two patent litigation matters against non-practicing entities. The first was related to activating personal computer software at remote locations. Mr. Tomasulo devised and executed a settlement strategy resulting in a favorable settlement for the client. The second involved certain motion-sensitive sound effects devices and image display devices before the ITC and Eastern District of Texas and resulted in a favorable settlement for the client.
• Insurance coverage negotiations alleging fraudulent inducement, breach of contract, violation of common law right of publicity, and unfair business acts.
• Represented the client in responding to various demand letters from 45 states, either directly or through ACS Unclaimed Property Clearinghouse, regarding rebates processed by Young America, Inc. The client filed a complaint against Young America, Inc. seeking, inter alia, indemnity in connection with the foregoing demand letters. Mr. Tomasulo was lead counsel in the litigation and negotiated a settlement with Young America that was favorable to the client, and the litigation was dismissed.
• Theft of trade secrets where several employees, a former consultant, and a competitor were conspiring to usurp a confidential and trade secret corporate opportunity. Mr. Tomasulo worked with the client and computer forensic specialists to locate evidence of the conspiracy from the employees’ workstations. He obtained broad temporary restraining orders, evidence preservation orders, and orders for expedited discovery against all defendants, effectively halting defendants’ plans. The case settled requiring the defendants to pay substantial monetary damages and agree to entry of broad consent judgments and permanent injunctions.
• Copyright and trademark infringement related to the audiovisual materials and packaging for one of the company’s video games. Following the filing of a motion for preliminary injunction, the parties reached a confidential settlement of the matter favorable to the client.

Semiconductor developer

• Patent infringement litigation where the plaintiff asserted five U.S. patents related to fiber-optics products. Mr. Tomasulo served as lead counsel and devised and executed a strategy that resulted in a quick and favorable settlement of all claims.
• Patent infringement litigation brought by the semiconductor developer seeking a judgment of infringement on a patent regarding the fabrication of light emitting diodes. The case is ongoing.

Heavy duty trucking company

• In two separate patent infringement matters, Mr. Tomasulo successfully asserted a claim of patent infringement, the matter was resolved with a license agreement.
• Claims of trademark infringement, reverse passing off, copyright infringement, and unfair competition were asserted by Mr. Tomasulo’s client. The defendant had been passing off the client’s parts as its own and had infringed the unregistered rights in its part numbers. The matter resolved through confidential settlement.

Other clients

• Mr. Tomasulo was lead counsel in the defense of a consumer electronics company. The asserted patent related to remote control devices. Mr. Tomasulo was able to negotiate a highly favorable settlement and avoid protracted litigation.
• Mr. Tomasulo was lead counsel for a national furniture and electronics rent-to-own client in a case alleging the infringement of its patent for email filtering software and/or hardware. Mr. Tomasulo negotiated a highly favorable settlement, and the client was dismissed from the litigation.
• Mr. Tomasulo was lead counsel for a national retailer in a design patent infringement case. A competitor in the fitness apparel market, asserted two design patents against Mr. Tomasulo’s client with regard to women’s exercise apparel. After taking discovery, Mr. Tomasulo obtained a “walk-away” for his client whereby the case was dismissed.  
• Mr. Tomasulo is lead counsel for a multinational video game company a patent infringement case. The plaintiff filed approximately 50 separate law suits against a number of companies in the District of Delaware asserting its patent titled “Proactive Presentation of Automating Features to a Computer User.” The case is ongoing.
• Mr. Tomasulo is lead counsel for the plaintiffs in a case currently pending in the Western District of Virginia. The plaintiffs asserted that another commercial exercise machine company marked their machines with inapplicable patents for the purpose of deceiving the public. In early 2012, the court found that the defendant had mismarked nine specific machines. The case is ongoing.
• Mr. Tomasulo defended a major computer manufacturer on a patent litigation case brought by a NPE pertaining to an Internet/software patent for managing and querying complex databases. They obtained early dismissal on extremely favorable terms; the matter is ongoing as to other defendants.
• Mr. Tomasulo initiated and spearheaded an independent investigation that demonstrated that the patentee had intentionally withheld, manipulated, and altered critical prior art documents regarding the patentee’s own prior art sales and marketing activities. His investigation led to a case-changing sanctions order against the patentee and its outside counsel with the court concluding that “sanctions are warranted here, as it is clear that, but for plaintiff’s aggressive independent investigation, it might never have received the subject documents.” The misconduct by the patentee and its counsel led to a motion for terminating sanctions. The case settled on confidential terms while that motion was pending.
• Mr. Tomasulo represented a motorized vehicle manufacturer and obtained permanent injunctions against a competitor and its U.S. distributor. The defendants entered the U.S. market with a low quality line of Chinese ATVs and off-road motorcycles, which infringed the plaintiff’s trademark rights in the registered mark and trade dress rights for a line of ATVs and off-road motorcycles. The defendants also infringed copyrights and trademark rights and engaged in unfair competition by copying the client’s website, using an almost identical web address, and failing to disclose the Chinese origin of the products in violation of U.S. law. The injunction halted these practices and protected the client’s rights.
• In representing an accused infringer in a patent litigation involving air bag initiators, Mr. Tomasulo’s initial review of the inventor’s notebooks caused him to suspect their authenticity. Mr. Tomasulo worked with a forensic document expert to demonstrate that the inventor had indeed forged and backdated entries in his lab notebooks, which led to the case settling quickly on terms highly favorable to Mr. Tomasulo’s client.
• Mr. Tomasulo represented the defendants in three cases regarding patent and trade secrets involving hardware logic emulators. Mr. Tomasulo wrote and argued a pivotal summary judgment motion in which the court ruled that certain of the patents-in-suit were invalid under the “on-sale” bar.
• Mr. Tomasulo represented a major food manufacturer in a product liability matters relating to the worldwide use of the pesticide DBCP. In a recent high-profile non-patent case regarding a fraudulent attempt to enforce against our client in the United States, a Nicaraguan court granted judgment for $489 million. Mr. Tomasulo’s team obtained a dismissal at the pleading stage and an order from the U.S. Court of Appeals for the Ninth Circuit requiring two very well-known plaintiffs’ firms to “show cause in writing ... why it or he should not be suspended, disbarred, or otherwise sanctioned.” The plaintiffs’ lawyers have been sanctioned and disciplined by the U.S. Court of Appeals for the Ninth Circuit. Mr. Tomasulo was a primary interface with our client’s Nicaraguan counsel and played a significant role in pursuing and documenting the evidence that ultimately led to the Ninth Circuit’s orders.

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