Michael A. Guiliana
J.D., B.S.M.E., Registered Patent Attorney
Michael A. Guiliana, founding partner of Via LLP, has represented start-up companies and well-established, multi-national companies. Michael has significant experience advising clients in all aspects of intellectual property, including patents, trademarks, domain names, copyrights, trade secrets, rights of publicity, and false advertising. He frequently advises clients regarding strategically structuring their intellectual property estates and works to create an integrated and balanced portfolio that effectively combines the overlapping protections of patents, trademarks, copyrights, and trade secrets.
Michael frequently advises clients regarding offensive and defensive competitive strategies, prelitigation strategies, infringement studies, invalidity and noninfringement opinions, monitoring and enforcement of patent and trademark rights, strategic transactions and complex patent and trademark prosecution, including reexaminations, reissues, and IPRs. He assists clients with implementing internal programs to identify, evaluate and protect all forms of intellectual property.
With a degree and experience in mechanical engineering, Michael has represented clients across a diverse range of technologies, including semiconductor, furniture, SAAS, and electronics manufacturers including RED Digital. Michael's experience includes advising early-stage companies through successful acquisitions, such as Telogis, Inc. (acquired by Verizon), Interlace Medical (acquired by Hologic, Inc.). Michael has also represented multi-national corporations, including Yamaha Motor and Fisher & Paykel Healthcare Limited. He also has an extensive background in aerospace, automotive and power sport technologies.
Areas of practice
Patents, Trademarks, Copyrights, Licensing, Alternative Dispute Resolution
Education
J.D., University of the Pacific; B.S.M.E., University of California, Irvine with a concentration in materials
Admitted
State Bar of California, Central District of California, UPSTO Registered Patent Attorney.
Experience
Ex Parte Bradley G. Vernon and Patrick D. Arnold, United States Board of Patent Appeals and Interferences, Appeal No. 2009-013984: Represented patent applicant in appeal of rejection of utility patent application, resulting in all rejections being overturned.
Kruse Technology Partnership v. Cummins, Inc., SACV 10-01066 JVS: Represented plaintiff in patent infringement litigation, negotiated settlement, January 2011.
Kruse Technology Partnership v. General Motors, CV 09-4970 JV | Kruse Technology Partnership v. DMAX, SACV 09-00458 JVS: Represented plaintiff in patent infringement litigation, negotiated settlement after formal mediation, November 2010.
Kruse Technology Partnership v. Isuzu, SACV 09-3710 JVS: Represented plaintiff in patent infringement litigation, negotiated settlement of patent infringement litigation via formal mediation, August 2010.
Ex Parte K. Michael Harris, United States Board of Patent Appeals and Interferences, Appeal No. 2009-006390: Represented patent applicant in appeal of rejection of design patent application, resulting in all rejections being overturned, and resulting in issuance of U.S. Design Patent No. 7,866,242.
Kruse Technology Partnership v. Caterpillar, CV 04-10435 PA: Represented plaintiff in patent litigation over diesel engine combustion technology, defeated Caterpillar’s summary judgment of non-infringement and invalidity, negotiated settlement before trial, December 2008.
Ex Parte Robert M. Todd, United States Board of Patent Appeals and Interferences, Appeal No. 2006-3291: Represented patent applicant in appeal of rejection of utility patent application, resulting in all rejections being overturned, and resulting in issuance of U.S. Patent No. 7,270,377.
In Re Stuart J. Ledingham, United States Board of Patent Appeals and Interferences, Appeal No. 2003-1862: Represented patent applicant in appeal of rejection of design patent application, resulting in all rejections being overturned, and resulting in issuance of U.S. Design Patent No. 503333.
Yamaha Motor Company, Ltd. V. Bombardier, 60 USPQ2d 1541 (C.D. Cal. 2001) 59 USPQ2d 1088 (C.D. Cal. 2001), Represented plaintiff personal watercraft manufacturer in a series of patent enforcement actions in both District Court and the United States International Trade Commission relating to a portfolio of dozens of patents. These actions were resolved by license and settlement agreements resulting in significant royalties to the client.
Lectures and Seminars
Moderator, "California Electrification," Calit2 Igniting Technology Event, University of California Irvine, November 2018.
Speaker, "Here's Another Fine Mess You've Gotten Me Into - Best Practices for Employee, Contractor and Consulting Agreements," Association of Corporate Counsel (ACC) - Southern California DoubleHeader, April 2016.
Speaker, "Intellectual Property Protection in the Life Sciences," International Symposium on Technology for Biomedical Devices, Calit2, February 2016.
Panelist, "What In-House Counsel and Internal Business Units Need to Know About IP Law," Association of Corporate Counsel (ACC) - Southern California In-House Counsel Conference, January 2016.
Panelist, "Writing the Script for an Effective Patent Portfolio," Association of Corporate Counsel (ACC) - Southern California DoubleHeader, November 2015.
Moderator, "SMART Worker," Calit2 Igniting Technology Event, University of California Irvine, May 2015.
Moderator, "The Internet of Things," Calit2 Igniting Technology Event, University of California Irvine, November 2014.
Moderator, "Proof-of-Concept Services," Calit2 Igniting Technology Event, University of California Irvine, November 2013.
Moderator, "From Pitch to Rich," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, June 2013.
Panelist, "Venture Science: Crossing Disciplines," Creating Innovation, Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, November 2012.
Moderator, "Energy Empowerment: Get Smart About Efficiency," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, November 2010.
Panelist, "Pharmaceutical Patent Applications in China, Europe and America," Intellectual Property Office of Jiangsu Province, Pharmaceutical News and Wuxi Intellectual Property Office, WuXi, China May 26-29, 2010.
Moderator, "Calit2 TechPortal," CalIt2 Igniting Technology Series Panel Discussion, University of California Irvine, May 2010.
Moderator, "Network Generation: Transforming the Global Infrastructure to Address Evolving Demands," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, November 2009.
Moderator, "The Clean Energy Challenge," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, May 2009.
Moderator, "H2Ology: Tapping into Technology to Solve Water Woes," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, November 2008.
Moderator, "Web 3.0: The Next Transformation of the Internet Experience," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, June 2007.
Speaker, "Ten Things You Need to Know About Intellectual Property," Society of Automotive Engineers Southern California Chapter Conference, Irvine, California, February 2005.
Instructor, Intellectual Property for the High Technology Industry, UCI Extension 2 Day Course, 2006-2009.
