Michael Fainberg

Partner

Michael provides strategic intellectual property counseling and global patent portfolio management.

Michael Fainberg Portrait

Michael is a patent attorney with an engineering background. His practice focuses on intellectual property (IP) counseling and global patent portfolio management. Michael has successfully obtained over 1,500 US patents and hundreds more internationally, spanning diverse technological fields, such as computer systems and software applications, microelectronics, telecommunications, cybersecurity, cloud computing, financial technologies (including blockchain and cryptocurrency), and artificial intelligence (AI) and machine learning (ML). Beyond his patent prosecution work, he represents clients in patent trials and post-grant proceedings, provides patent opinions, and offers strategic counsel in IP transactions.

Michael leads a team of patent attorneys and agents who have successfully obtained over 200 US patents for AI/ML-related technologies, with hundreds more patent applications pending. He also extensively speaks and publishes on topics related to the patenting of AI and software technologies.

Client Work

Michael develops and manages global IP portfolios for US and international technology companies:

  • Managing the US patent portfolio for a rapidly growing international AI/ML solutions developer.
  • Developing global patent and trademark portfolio for an international cybersecurity software provider.
  • Assisting the world’s leading LCD/OLED display manufacturer with the US patent procurement.
  • Managing the global patent portfolio for a provider of cloud solutions for backup and disaster recovery.
  • Developing the US patent portfolios for Chinese networking equipment manufacturers.
  • Managing the US patent portfolio for an international developer of cloud server virtualization software.
  • Managing US patent procurement for European automakers and railroad equipment manufacturers.

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 ArentFox Schiff, 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

  • “How to Mitigate Section 101 Costs for Clients” on ManagingIP.com
  • “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

Publications

  • “Trends, Challenges, and Strategies of Patenting AI Innovations in the US,” China Intellectual Property & Innovation Summit 2024 (CISIP), November 2024, Beijing, China
  • “Patenting Solutions in the Field of IT, Blockchain and Crypto Technologies: the US Experience”, III International Scientific and Practical Conference “Intellectual Rights: Challenges of the 21st Century”, November 2021, Tomsk, Russia
  • “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

Recognitions

  • The Legal 500 United States (2023 - 2024)

Insights

Awards

US Recommended Lawyer 2024