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Michael D. Van Loy, PhD

Member

MDVanLoy@mintz.com

+1.858.314.1559

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Michael is a skilled patent attorney and technology protection strategist. He works with both growing and established companies to create, manage, and improve patent portfolios both domestically and internationally with a keen focus on enforceability and business value. He combines a deep and broad technical background with extensive experience developing innovative legal strategies to address patentability challenges involving the mechanical arts, materials science, and computer-implemented technologies (including inhaler technologies, database management, manufacturing techniques, process control, data analytics, etc.), as well as the increasingly commercially important intersection of software and other technical fields such as drug delivery and other medical devices, analytical and sensing systems, transportation, manufacturing, and consumer products.  He also advises on business-critical IP due diligence issues, patent portfolio valuation, and licensing agreements. 

Clients rely on Michael’s extensive experience, accumulated over 18 years of legal practice, to navigate the nuances of patent procurement and enforcement in Europe and Asia in addition to the United States.  His skills in mining existing patent assets to enhance their value and in designing and implementing programs for protecting ongoing innovations are highly sought after by cutting edge technology companies.

Education

  • Santa Clara University (JD)
  • University of California - Berkeley (PhD, Civil & Environmental Engineering)
  • University of California - Berkeley (MS, Civil & Environmental Engineering)
  • University of California - Berkeley (BS, Chemistry)

Experience

  • Michael leads the Mintz team responsible for development and management of the worldwide patent portfolio protecting current and future products of a market leading e-cigarette manufacturer.  He applies innovative asset development strategies to leverage existing disclosures and on-going utility and design filings as part of an integrated, global strategy to interdict copycat products with a view toward market share protection and regulatory compliance.
  • Michael co-manages a sizable portfolio for a market-leading German developer of database and business software products, and collaborates with other Mintz attorneys to develop and apply effective strategies for addressing the ever-changing patentability landscape for software-based inventions.
  • Michael also co-manages the Mintz team that designs and implements a US and foreign patent program for one of the world's largest credit rating agencies, which is also a leader in fraud detection and other financial risk mitigation technology. The Mintz team has tailored the company's portfolio and filing strategies with a particular focus on jurisdiction and subject matter analysis to maximize the value of the company’s legal spend while securing protection in the markets where the company is most likely to achieve grant of valuable, enforceable assets.

Recognition & Awards

  • Included on the San Diego Super Lawyers Rising Star: Intellectual Property list (2016)

Viewpoints

Viewpoint

Federal Circuit Closes Another AIA Loophole

June 28, 2019 | Blog | By Michael Van Loy, Justin J. Leisey

The Federal Circuit recently ruled that state sovereign immunity does not apply in Inter Partes Review (IPR) proceedings, closing another America Invents Act (AIA) loophole.  The case, Regents of the University of Minnesota v. LSI Corporation and Avago Technologies U.S. Inc. (Fed. Circ., 2018-1559), included the review of six Patent Trial and Appeal Board (PTAB) IPRs where the Regents of the University of Minnesota (UMN) filed motions to dismiss based on state sovereign immunity. 

Federal Circuit Invalidates Claim to Generating “Financial Risk” Reports

March 21, 2017 | Blog | By Michael Van Loy, Nicholas Mouton

In the recent decision of Clarilogic v. Formfree Holdings, the Federal Circuit invalidated the patentee’s (Formfree) claim to a “computer-implemented method for providing certified financial data indicating financial risk about an individual.” 

Software is Still Patent Eligible

February 16, 2017 | Advisory | By Michael Van Loy, Michael Renaud, Sandra Badin, Matthew Karambelas, Nicholas Mouton

In recent years, software patents have come under fire from legislation (the American Invents Act) that has generally made patents easier to invalidate, and from court decisions (the Supreme Court’s decision in Alice v. CLS Bank1 and its progeny) that have made computer-implemented inventions more vulnerable to subject matter eligibility challenges.
On November 2, 2016 the United States Patent and Trademark Office (USPTO) issued a memo to Examiners on its stance on subject matter eligibility in response to the McRO and BASCOM Federal Circuit decisions, previously discussed at Global IP Matters.
Disavowal can occur when a patent holder disavows the full scope of claim terms in the specification or during prosecution (e.g., through the doctrine of prosecution history estoppel). In either event, disavowal requires clear and unequivocal evidence that the claimed invention includes or does not include a particular feature. 

IP for Start-ups: Part VI

July 19, 2016 | Blog | By Michael Van Loy

In our sixth "IP for Start-Ups” video, “Getting the Correct Named Inventors on a Patent”, Mike discusses the importance of including all of the inventors on a patent and why it's important to name anyone who has a reasonable proximity to the invention.

IP For Start-Ups: Part V

July 5, 2016 | Blog | By Michael Van Loy

In our fifth "IP for Start-Ups” video, “Copyrights versus Patents to Protect Software Innovations”, Mike discusses the pros and cons of using copyrights or patents to protect your software.

IP for Start-Ups: Part IV

June 28, 2016 | Blog | By Michael Van Loy

In our fourth "IP for Start-Ups" video, "Are U.S. Patents Good Outside of the USA?", Mike discusses how geography plays into patent protection, both inside the U.S. and internationally.

IP for Start-Ups: Part III

June 21, 2016 | Blog | By Michael Van Loy

As our weekly "IP for Start-Ups" series continues, IP attorney Mike Van Loy discusses the nuances behind writing claims that are both broad enough to capture potential infringers and specific enough to show that the patent is not covered by prior art, in our third video, "The Importance of Getting the Claims Right in a Patent".

IP for Start-Ups: Part II

June 14, 2016 | Blog | By Michael Van Loy

Check out the second video in our "IP for Start-Ups" series, "The Folly of the 'One Killer Patent' Strategy", below.  Mike talks about the strategic advantage of having a modest patent portfolio, rather than only a single patent.

Events

Speaker
May
14
2018

USPTO Post-Grant Patent Trials 2018: Change & Recalibration

Practising Law Institute

PLI California Center 685 Market Street San Francisco, CA

Panelist
Aug
8
2016

Nuclear Innovation Bootcamp

University of California, Berkeley

Berkeley, California

Speaker
Dec
2
2015