Michael A. Nicodema

Michael A. Nicodema

Shareholder

Michael A. Nicodema is a shareholder in GT’s New Jersey and New York offices. Mike is an experienced trial lawyer, and has tried patent and trade secret cases in a variety of subject matter areas, including internet technology, consumer products, orthopedic implants, industrial and commercial mechanical devices, and chemical and biological processes used in the nutritional supplement industry. He is also a seasoned appellate advocate in patent cases before the Court of Appeals for the Federal Circuit (“CAFC”). In addition to intellectual property cases, Mike has tried cases involving breach of contract disputes, unfair competition, probate and will contests, products liability cases involving complex scientific evidence, employment disputes, and civil rights issues. Mike’s diverse trial experience has enabled him to develop the thematic and storytelling skills so critical to persuasive advocacy before a jury.

Mike is a Steering Committee member of GT’s Trial Practice Group and co-leader of GT’s Federal Circuit Practice group. He is also a certified instructor for the National Institute of Trial Advocacy (NITA), and a lead faculty member of GT's Litigation Academy, which provides intensive in-house training programs in jury trials, expert witness preparation, deposition practice, motion practice and mediation.

Mike has been recognized by organizations such as Intellectual Asset Management (“IAM”) magazine, The Best Lawyers in New YorkNew Jersey Super LawyersLaw360, and The Legal 500 United States. In 2011, Mike was named to IAM magazine's “Patent Litigation 250: The World’s Leading Patent Litigators,” based on peer and client interviews. IAM wrote: “Experienced trial attorney Michael Nicodema is the key contact in New Jersey. Clients think extremely highly of him: “He gets us results we cannot get from other attorneys. He is always well prepared, addresses the core issues very well and persuades the court effectively on our behalf.” In 2012, IAM published an expanded list of the 1000 “World’s Leading Patent Practitioners,” and Mike was once again named to the list. IAM wrote about Mike: “He is a ‘totally prepared and accomplished storyteller’ in court and proves ‘equally adept at explaining the intricacies of the technology and the law to business folk.’” In 2013 and 2014, IAM again ranked Mike as a top intellectual property litigator, writing in 2013 that “Michael Nicodema tries a lot of patent cases; his dynamic narrative style plays very well with juries.” Also in 2013, GT’s appellate group was recognized by The Legal 500 United States, and Mike was named for his work in the Federal Circuit. Mike has recently authored two articles on effective jury trial techniques and appellate advocacy skills in patent cases: "Theater Tips For Patent Jury Trials: A View From The Trenches" for the Association of Corporate Counsel New Jersey (NJCCA) Chapter on December 9, 2011 and "Your 15 Minutes: 5 Tips For Arguing In The Fed. Circ.," for Law 360 on January 13, 2012. In 2014, IAM 1000 again ranked Mike as a top intellectual property litigator, writing that "the silver-tongued trial lawyer Michael Nicodema is at the forefront of his litigation practice. With a gift for telling a compelling narrative, he nets great results in and out of the courtroom."

Concentrations

  • Trial practice
  • Patent litigation
  • Trade secret litigation
  • General commercial litigation
  • Appellate practice in the Federal Circuit 
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Capabilities

Experience

  • Glenmark Pharmaceuticals, Ltd. v. Napo Pharmaceuticals, Inc., ICDT Case No. 50 122 T 00512 11. (International Centre for Dispute Resolution, A Division of the American Arbitration Association) Trial counsel to Glenmark in 8-day trial on breach of contract and declaratory judgment contract claims involving collaboration agreement concerning development and commercialization of a pharmaceutical product. (decision pending).
  • In the Matter of the Estate of Lou Rawls, PB 2006-001904, Superior Court of Arizona, Maricopa County. Defended the estate of singer Lou Rawls and his widow Nina Rawls in week-long trial of claims involving lack testamentary capacity, undue influence, and violation of Arizona Adult Protective Services Act, in connection with Mr. Rawls' last will and testament. 
  • Air Express International, d/b/a DHL Global Forwarding Corporation v. Log-Net, Inc., 12 Civ. 1732 (MAS)(TJB) (D.N.J.). Lead trial counsel for declaratory judgment plaintiff DHL in commercial dispute involving breach of contract claims and trade secret misappropriation claims. Obtained preliminary injunction for DHL on breach of contract claims that prevented irreparable injury to a major DHL business unit. Case currently in discovery. 
  • Grow Company, Inc. v. Dilip Chokshi, et al., BER C-280-05. Lead trial counsel for defendants in trade secret misappropriation case involving nutritional yeast dietary supplements (N.J. Chancery Court). Obtained full defense judgment on all counts of complaint after eight week trial, and an award of almost $1 million in attorneys' fees and costs. 
  • Contour Optik, Inc., et al. v. Revolution Eyewear, Inc., 02-01087 (VAP) (C.D. Cal.). As lead trial counsel, obtained a $4.3 million jury verdict, pre-judgment, post-judgment interest, and defeated plaintiff's equitable intervening rights defense for unclean hands. 
  • Aspex Eyewear, Inc., et al. v. Concepts In Optics, Inc., 00-7067-Civ-Moreno. (S.D. Fla. 2007). As lead trial counsel, obtained an $8.2 million consent judgment for the Plaintiffs after trial and defeating infringer's Federal Circuit appeal. 
  • Sta-Rite Industries, LLC v. ITT Corp., et al., CA No. 6:08-CV-59 (LED) (E.D. Tex.). Lead trial counsel for Plaintiff. Obtained favorable settlement for client in the middle of jury trial on patents involving beverage and livewell pumps and pump brackets. 
  • Soverain Software v. JC Penney, et al., 6:09-CV: 00274-LED (E.D. Tex.). Lead trial counsel for defendant, Avon Products, Inc., in case involving three patents directed to internet shopping and session identifier technology. Defended Avon's key YourAvon.com website, used exclusively by Avon's sales representatives, against multi-million dollar damages claim in 5 day jury trial. 
  • Salient Surgical Technologies, Inc., and Medtronic, Inc. v. Bovie Medical Corporation, C.A. No. 10-494 (D. Del.) (SLR). Lead trial counsel for plaintiffs. Obtained favorable settlement from defendant and acknowledgement of validity and enforceability of patent directed to electrosurgical device. 
  • Betancourt v. Dolce International, Inc., et al., No. 18 1666 01362 12 (AAA, New Jersey). Co-trial counsel for respondents in case involving state and federal claims of employment discrimination and breach of contract claims. Obtained favorable settlement for client on all of petitioner’s claims after two week trial.
  • Envirofinance Group, LLC, et al. v. The Louis Berger Group, Inc., et al., BER-L-1397-13 (N.J. Sup. Ct., Bergen Cty.). Lead trial counsel for plaintiffs in case involving negligence, fraud, and construction design defect claims in connection with certain New Jersey wetlands projects. Case in discovery.
  • Mycone Dental Supply Co. v. Creative Nail Design, Inc. et al., No. 1:11-cv-4380 (D.N.J.). Lead trial counsel for co-defendant Dymax Corporation in patent infringement case involving a patent on certain pre-treatment compositions used in the nail salon industry. Case in discovery and Markman hearing pending.
  • Universal Electronics Inc. v. Logitech Inc., et al. 8:11-cv-01056 (C.D. Cal.). Lead trial counsel for plaintiff in patent infringement case pertaining to remote controls and related technology. Obtained successful settlement for client after claim construction and summary judgment proceedings.
  • Kelora Systems v. Target, et al., 11-cv-1548-CW (N.D. Cal.) Lead trial counsel for defendant Circuit City in patent infringement case involving patent relating to web-based parametric search systems. Obtained very favorable settlement for Circuit City. 
  •  Insured Deposits Conduit, LLC v. SFPI, LLC, Case 07-22735 (S.D. Fla.) (Ungaro). Lead trial counsel for patent owner SPFI in declaratory judgment action involving a method for securitization of certificates of deposit. Obtained dismissal for lack of subject matter jurisdiction on sophisticated MedImmune issue after close of discovery, and after obtaining claim construction victory on all disputed claim elements. 
  • Honeywell Int'l Inc., et al. v. Universal Avionics Corp., et al., CA No. 02-359-MPT (D. Del. 2008). Represented Universal as co-lead trial counsel in patent infringement case involving avionics software. Case amicably settled at trial. 
  • Metaldyne Company LLC. v. Alcoa, Inc., Case 2:07-CV-14272 (SMS). Lead trial counsel for Alcoa in trade secret misappropriation action involving aluminum steering knuckles used in the automotive industry. Obtained favorable settlement for client on eve of trial. 
  • Audiovox Corporation v. Monster Cable Products, Inc., Case No. CV-07-4622 (LDW) (E.D.N.Y.). Lead trial counsel for declaratory judgment plaintiff Audiovox in case involving one of Monster's patents and trademarks on cable assemblies used in a variety of consumer products. Obtained settlement and dismissal of Monster's claims after defeating Monster's motion to dismiss Audiovox's counts for trademark cancellation and fraud on the U.S. Trademark Office. 
  • Internet Media Corporation v. Dell, Inc., et al., CA No. 05-633 (SLR). Lead trial counsel for defendant Office Depot, Inc. in patent infringement case involving patent on a system for accessing internet websites. Won claim construction by taking aggressive strategy and submitting a proposed construction on key claim element different from other co-defendants. Case settled favorably. 
  • Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., et al., 672 F.3d 1335 (Fed. Cir. 2012). Lead appellate counsel for appellants. Obtained precedential decision reversing District Court's grant of summary judgment of patent enforceability on grounds of res judicata in connection with patent on magnetic clip-on eyewear. 
  • Innovention Toys, LLC v. MGA Entertainment, Inc., ---F.3d---, 2011WL 941563 (Fed. Cir. 2011). Lead appellate counsel for appellant MGA. In a precedential decision, obtained reversal of District Court's grant of summary judgment of patent validity on a patent for a laser board game, and expanded Federal Circuit law on issue of analogous art (cited 2 times by CAFC). 
  • Aspex Eyewear, Inc., et al. v. Clariti Eyewear, Inc., 605 F.3d 1305 (Fed. Cir. 2010). Lead appellant counsel for appellants Aspex Eyewear, Inc. and Contour Optik, Inc. In a precedential decision: (1) defeated claim of inequitable conduct, and obtained ruling that knowledge and non-disclosure by patentee of a third party's patent application purportedly on the same invention sought to be patented is insufficient to establish intent to deceive where patentee had never seen the contents of the third party application; and (2) establishing that the mere grant of a motion for summary judgment is insufficient to support an award of attorneys' fees under 35 U.S.C. § 285 (cited 11 times by CAFC). 
  • Revolution Eyewear, Inc. v. Aspex Eyewear, et al., 563 F.3d 1358 (Fed. Cir. 2009). Precedential decision that expanded application of rarely applied Intel "reasonably capable of infringement" line of cases, and clarifying previous precedent on the validity of patent claims that recite a solution to only one of the problems in the prior art solved by the invention. Lead appellate counsel for counterclaimant and appellee Contour Optik, Inc. Obtained affirmance of district court's grant of summary judgment of infringement and patent validity, and affirmance of the jury's award of $4.3MM in damages to Contour (cited 40 times by CAFC). 
  • Revolution Eyewear, Inc., et al. v. Aspex Eyewear, et al., 556 F.3d 1294 (Fed. Cir. 2009). Lead appellate counsel for defendants Aspex Eyewear, Inc. and Nonu Ifergan in appeal involving MedImmune issue relating to covenant not to sue offered by plaintiff on the eve of trial. Obtained reversal of district court's dismissal of defendants' counterclaims for invalidity and unenforceability. In a precedential decision, the Federal Circuit held that a covenant not to sue which did not cover future acts of alleged infringement on the products subject to the covenant did not strip the district court of declaratory judgment jurisdiction over the defendant's counterclaims for invalidity and unenforceability (cited 25 times by CAFC). 
  • Aspex Eyewear, Inc. v. Miracle Optics, Inc., 434 F.3d 1336 (Fed. Cir. 2006). Lead appellate counsel for appellants Aspex Eyewear, Inc., and Contour Optik, Inc. In a precedential decision, obtained reversal of District Court's dismissal of appellants' infringement action for lack of standing. Established law that a reservation of rights clause in an exclusive license agreement with a hard termination date cannot transform the licensee into an assignment, and thus cannot deprive the licensee of co-Plaintiff standing to sue with the patent owner for infringement (cited 36 times by CAFC). 
  • Aspex Eyewear, Inc., et al. v. Altair Eyewear, Inc., 07-1380, -1407 (Fed. Cir. 2008). Lead appellate counsel for Appellants Aspex Eyewear, Inc. (exclusive licensee) and Contour Optik, Inc. (patent owner). Obtained reversal of claim construction and reversal of grant of summary judgment of non-infringement on a patent covering magnetic clip-on eyewear; and affirmance of district court's denial of defendant's motion for summary judgment dismissing Aspex for lack of standing. Federal Circuit clarified potential ambiguity in its precedent by ruling that an oral or implied exclusive license is sufficient to confer co-plaintiff standing on the licensee to sue for infringement with the patent owner. 
  • Aspex Eyewear, Inc. v. Miracle Optics, Inc., Appeal No. 04-1138 (Fed. Cir., March 2, 2006): Lead appellate counsel for plaintiffs/patent owners-exclusive licensees. Obtained reversal of District Court claim construction, and vacature of summary judgment of non-infringement. 
  • Aspex Eyewear, Inc., et al. v. Concepts in Optics, Inc., et al., Appeal No. 03-1638 (Fed. Cir. 2004). Lead appellate counsel for plaintiffs/patent owners. Obtained vacature of summary judgment of invalidity for anticipation on plaintiffs' patent covering magnetic clip-on eyewear.

Recognition & Leadership

  • Listed, Managing IP Magazine's World IP Handbook and Survey, "IP Stars," 2013-2017
  • Listed,IAM magazine, 2011-2017
    • "IAM Patent 1000," Litigation & Transactions, 2015
    • "IAM Patent 1000," Litigation & Licensing, 2012-2014
    • "IAM Patent Litigation 250," 2011
  • Listed, Super Lawyers magazine, New York Metro Super Lawyers, 2011-2016
  • Listed, Super Lawyers magazine, New Jersey Super Lawyers, 2014
  • Member, Winning Team, New Jersey Law Journal’s "General Litigation Department of the Year" award, 2013
  • Team Member, Lexology’s Client Choice Award USA & Canada, United States: New Jersey, 2013
  • Listed, The Legal 500 United States, 2008-2009 and 2013
  • Listed, The Best Lawyers In New York, 2011
  • Team Member, a Law360 "Appellate Practice Group of the Year," 2010
  • Faculty Member, GT Trial Skills Academy
  • Certified Instructor, National Institute of Trial Advocacy (NITA)
  • Instructor/mock trial judge, LL.M. program in Trial Advocacy, Temple University School of Law
  • Member, New York State Bar Association
  • Member, American Intellectual Property Law Association
  • Member, Association of Trial Lawyers of America
  • Member, New York State Trial Lawyers Association
  • Barrister, New York County Lawyers Association American Inns of Court
  • Former Special Assistant District Attorney, Manhattan District Attorneys' Office

Credentials

Education
  • LL.M., Trial Advocacy, with highest honors, Temple University Beasley School of Law
  • J.D., with high honors, St. John's University School of Law
  • M.E.M., Manhattan College
    • School of Engineering
  • B.E., summa cum laude, Manhattan College
    • School of Engineering
Admissions
  • New Jersey
  • New York
  • Supreme Court of the State of New York, Appellate Division, Second Judicial Department
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. Court of Appeals for the Third Circuit
  • U.S. District Court for the District of Arizona
  • U.S. District Court for the District of Colorado
  • U.S. District Court for the District of New Jersey
  • U.S. District Court for the Eastern District of Michigan
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • U.S. Patent and Trademark Office