Michael Tonkinson

OVERVIEW

Mike focuses his practice on prosecuting and defending clients’ patents in proceedings before the USPTO and the federal courts.

Mike prepares and prosecutes patents for sophisticated patent holders largely within the telecommunications, electronics and computer fields. His training and experience as an electrical engineer gives him the ability to provide clients with a comprehensive understanding of the patent process, from invention through enforcement. He defends clients accused of patent infringement and enforces clients’ patent rights before federal district courts and the Patent Trial and Appeals Board. Mike’s extensive litigation background informs his prosecution counsel, as he has a unique vantage with experience from multiple perspectives.

Prior to joining Holland & Hart, Mike practiced for several years at two firms in Silicon Valley, Orrick, Herrington & Sutcliffe and Dickstein Shapiro.

EXPERIENCE

Experience

Preparation and Prosecution

Patent portfolio development and management
Domestic and international patent preparation and prosecution
Claim analysis and construction
Standards-related patents

Opinions and Counseling

Patent infringement and validity analysis
Non-infringement/invalidity opinions
Product design counseling

Patent Licensing and Due Diligence

Product clearances

Pre-litigation and Litigation Strategies

Inter Partes Review (IPRs)
Post-Grant Review Proceedings (PGRs)
Pre-litigation strategies
Patent litigation and representation before the PTAB, Federal District Courts

TECHNOLOGIES

Electrical/Electronic/Computer Science
Wireless telecommunications, standards-related technologies, fiber-optic communications components and networks, optics, encryption for communication networks, electronic design automation, transistor design, micro-electromechanical (MEMS), accelerometers, and gyroscopes

Medical Devices
Patient-monitoring devices, ophthalmic imaging devices

PRACTICES