Michael Fainberg

Partner
Michael is a registered patent attorney and a Partner based in New York.
Michael Fainberg, IP partner

Michael holds advanced degrees in Computer Engineering and Wireless Telecommunication Networks. Michael provides strategic intellectual property (IP) procurement and enforcement counseling to global technology companies. He obtained hundreds of patents in the fields of computer hardware and software, wireless telecommunications, electronics, cybersecurity, blockchain, cryptocurrency, machine learning, AI and automotive technologies.

Michael also represents technology companies in patent litigation matters in US federal courts as well as post grant review (PGR) proceedings before the USPTO. He also provides patent invalidity, non-infringement and freedom-to-operate opinions in various technologies. Michael also conducts IP evaluations and due diligence in support of corporate mergers and acquisitions, and counsels in patent purchases, sales and licensing transactions.

Client Work

Michael develops and manages global IP portfolios for multinational technology companies:

  • Representing world’s leading LCD and OLED display manufacturer based in China in patent filing and prosecution matters in the US.
  • Managing global patent and trademark portfolios for a leading antivirus and computer security software developer based in Russia.
  • Representing a leading developer of cloud software for backup and disaster recovery based in Europe in patent prosecution and litigation matters in the US and worldwide.
  • Representing an international developer of virtualization software in patent prosecution matters in US.
  • Representing Chinese electronics and telecommunication equipment manufacturers in patent filing and prosecution matters in the US.
  • Representing a European automaker and railroad equipment manufacturer in patent filing and prosecution matters in the US.

Michael also represents companies in technology-related litigations and PGR proceedings:

  • Inter Partes Review involving patent for data compression technology Acronis Inc. v. Realtime Data LLC
  • Inter Partes Review involving patent for data backup technology Acronis Inc. v. Realtime Data LLC
  • Patent infringement case involving data compression technology Realtime Data LLC v. Acronis Inc.
  • Patent infringement case involving software activation technology Uniloc USA Inc. v. Acronis Inc.
  • Patent infringement case involving software registration technology Uniloc USA Inc. v. Acronis Inc.
  • Copyright, trademark and licensing dispute between a software vendor and distributor Kaspersky Lab Inc. v. Tall Licensing Ltd.

Previous Work

Prior to joining Arent Fox, Michael was an associate in the New York office of a prominent law firm. He also worked as a patent agent while attending law school.

Press Coverage

  • "PTAB to Review Realtime Data Patent in 6th IPR Challenge" on Law360
  • “Accelerated Examination is Better Examination” on IPWatchDog.com
  • “Apple, Samsung Go Head-to-Head Over Handset Patents” in Mobile Marketer

Publications, Presentations & Recognitions

  • "Successful Strategies for Patenting Cutting-Edge Computer and Software Technologies in the US," China Intellectual Property & Innovation Summit 2018 (CISIP), April 2018, Shanghai, China 
  • "Strategies and Practices for Patenting Information Technologies in the US," Patent School Skolkovo, September 2017, Moscow, Russia
  • “Approaches to Registration and Protection of Trademarks in the U.S.” the VI International Forum “Intellectual Property - XXI Century” organized by the Chamber of Commerce and Industry of the Russian Federation, April 2013, Moscow, Russia
  • Recent Developments in the U.S. Patent Practice,” the VI International Forum “Intellectual Property - XXI Century” organized by the Chamber of Commerce and Industry of the Russian Federation, April 2013, Moscow, Russia
  • “Evolution of the Standard of Patentability in the United States,” St. Petersburg’s 10th Annual Collegial Readings on Intellectual Property, June 2010, St. Petersburg, Russia
  • “Investment in Russian-Developed IP,” Russia-America: Trade and Investment Cooperation Forum organized by Russian Managers Association, Chamber of Commerce and Industry of the Russian Federation and San Francisco Global Trade Council, June 2008, San Francisco, California
  • “Protection and Monetization of Russian-Developed IP in the US,” Russian Venture Forum and Fair organized by Russian Private Equity and Venture Capital Association, October 2006, St. Petersburg, Russia
  • “Intellectual Property Protection in the US: Patents and Trademarks,” Gorodissky & Partners’ 4th Annual Seminar on Strategies for Protecting and Managing of Company’s IP, April 2006, Moscow, Russia
  • “Analysis of the Interference between IEEE 802.11b and Bluetooth Systems,” IEEE 54th Vehicular Technology Conference, October 2001, Atlantic City, New Jersey
  • “Maximizing Performance of a Wireless LAN in the Presence of Bluetooth,” The Third IEEE Workshop on Wireless LANs, September 2001, Newton, Massachusetts
  • International
  • Languages
    Russian
  • Bar & Court Admissions
    • New York Bar
    • US Patent and Trademark Office Bar
    • US District Court, Eastern District of Texas
  • Education
    New York Law School
    JD
    ,
    2005
    Polytechnic Institute of New York University
    MS
    ,
    Telecommunication Networks
    ,
    2001
    Polytechnic Institute of New York University
    BS
    ,
    cum laude, Computer Engineering
    ,
    2001