Professional Experience

Michael P. Sandonato chairs the firm’s Electronic and Computer Technologies practice group and co-chairs the firm's e-Commerce and New Media practice group.

He is active in all aspects of the firm's patent practice, focusing particularly on matters related to electronics, computer software and hardware and e-commerce. Mr. Sandonato’s practice includes litigation, IP due diligence investigations, licensing and technology transfers, client counseling and patent prosecution. 

His litigation work includes representing: 

• Prudential in a patent infringement dispute in Federal Court in Texas involving financial product marketing techniques.
  
  
• Sirona Dental in a patent infringement suit in Federal Court in Wisconsin involving digital dental imaging products.
  
  
• Canon USA in a patent infringement dispute in Federal Court in Illinois involving software for 3D product tours.
  
  
• Entegris in a patent infringement dispute in Federal Court in New York involving filtration equipment used in semiconductor manufacturing.
  
  
• Honeywell in a trade secret misappropriation and patent inventorship dispute in Federal Court in Michigan involving processes for making automotive brake pads.
  
  
• All Media Guide (now part of Rovi) in a patent infringement suit dispute in Federal Court in Wisconsin involving software for managing digital music.
  
  
• Barnes & Noble and RedDotNet in a patent infringement dispute in Federal Court in Texas involving in-store multi-media kiosks.
  
  
• Canon in a patent licensing dispute in Federal Court in Texas involving flat-panel television technology.
  
  
• Personal-Touch Home Care in a patent infringement dispute in Federal Court in New York, and in a related AAA Arbitration, involving telephone-based personnel tracking systems.
  
  
• ElringKlinger AG in an International Arbitration in Zurich involving patent and trade secret claims related to automotive cylinder-head gaskets.
  
  
• Walt Disney Company in an inventorship dispute in Federal Court in Florida involving a patent on Disney’s FastPass ™ system.
  
  
• Rohde & Schwarz GmbH in a patent infringement dispute in Federal Court in California involving GSM-compatible vector signal generators.
  
  
• Allgon AB (now part of PowerWave Technologies) in a patent infringement dispute in Federal Court in Georgia involving mobile telephone base station antennas.
  
  
• Garmin in a patent infringement dispute in Federal Court in Texas involving GPS technology.
  
  
• Schick Technologies (now part of Sirona) in a patent infringement dispute in Federal Court in New York involving digital dental imaging products.
  
  
• Nintendo in a patent infringement dispute in Federal Court in New Jersey involving video game systems.

Mr. Sandonato has conducted IP due diligence investigations for numerous investors and financial institutions, including Ripplewood Holdings, Citigroup, Goldman Sachs, Credit Suisse and the Carlyle Group, and has rendered scores of opinions on issues of patent infringement, validity and enforceability.

Mr. Sandonato presently serves on the firm’s Management Committee and was formerly the Chair of the Recruiting Committee.

Awards and Recognition

He is listed as a Top New York City Intellectual Property Litigator in the 2009 issue of Super Lawyers: New York Metro Edition.
Listed in the 2009 and 2010 issues of Intellectual Assets Management's IAM 250 -- The World's Leading IP Strategists.
Recipient of 2008 Burton Award for Legal Achievement for "High court to rule on territorial reach of patents," originally published in January 27, 2008 issue of The National Law Journal.


For information on the selection processes, see:

Super Lawyers
IAM 250 -- The World's Leading IP Strategists
Burton Awards

Education

J.D., Columbia University School of Law, 1992, Harlan Fiske Stone Scholar
M.S.E.E., University of Southern California, 1989
B.S.E.E., cum laude, Polytechnic University, 1987, Tau Beta Pi, Eta Kappa Nu

Bar Admissions

State of New York, 1993; U.S. Court of Appeals for the Federal Circuit; U.S. District Courts for the Southern and Eastern Districts of New York; U.S. Court of Appeals for the Fifth Circuit; U.S. District Court for the Western District of Wisconsin; U.S. Patent and Trademark Office;

Professional Activities

American Bar Association; New York Bar Association; American Intellectual Property Law Association; New York Intellectual Property Law Association; Licensing Executives Society

Related Information

Representative Cases

Nano-Proprietary, Inc. v. Canon Inc.
5th Cir. 2008

Nano-Proprietary, Inc. v. Canon Inc. and Canon U.S.A., Inc.
W.D. Tx. 2007

General Electric Co. v. Nintendo Co., Ltd.
Fed. Cir. 1999

Publications

The Supreme Court's Decision in Bilski v Kappos: Machine-Or-Transformation Is Not The Sole Test, But Claims Still Found Unpatentable
Fitzpatrick Case Update
June 28, 2010

Patenting Software and Business Methods After Bilski
Executive Counsel
February/ March 2009

Federal Circuit Changes Test for Patenting of Processes
The New York Law Journal
November 10, 2008

High court to rule on territorial reach of patents
The National Law Journal
January 22, 2007

Injunctions After 'ebay': Is the Specter Still Real?
Law.com
November 9, 2006

Patent's Meaning Not Found in Dictionary
Executive Counsel
January/February 2006

EPO's Differing Standards
The National Law Journal
October 25, 2004

Patent Notice Letters: Manage With Care
General Counsel New York
October 12, 2004

Dictionaries and Claim Construction
New York Law Journal
January 9, 2004

Patent Forseeability in the Wake of Festo
2003: The Year in Review Findlaw Corporate Counsel Center
December 2003

Federal Circuit Leaves Open the Question of Which Materiality Standard Should Apply in Inequitable Conduct Determinations
Corporate Counsel
October 2003

IP for the Hi-Tech Industry
Building and Enforcing Intellectual Property Value: An International Guide for the Boardroom 2003
June 2003

Will Supreme Court Accept Invitation on Post-Expiration Royalties?
New York Law Journal
December 2, 2002

Software and Business-Method Patents: A Decade in Review
The Patent Journal
July 2002

Current Developments in Business Method Patent Law
E-Commerce Law Journal
September 2001

The New Patent Statute: First Inventor Defense
Patent Strategy & Management
June 2000

Patent Protection of Computer Software
Computer Software Agreements: Forms and Commentary
June 1999

Events

Beyond Bilski: The Future of Patent-Eligible Processes
Law 360
June 30, 2010

5th Annual Conference on Corporate Intellectual Property in China 2010
LexisNexis
April 22-23, 2010

Injunctions After eBay
18th Annual Fordham Intellectual Property Law Institute
April 8, 2010

IP Issues and Recent Cases in Standard Setting
5th Annual IP Counsel Forum
March 24, 2009

In The News

Nine Fitzpatrick Partners Named As Top New York Intellectual Property Litigators in the 2009 issue of Super Lawyers: New York Metro Edition
Super Lawyers: New York Metro Edition
October 2009

Respond Carefully to Notification of Adversely Held Patents
Counsel to Counsel
May 2009

Press Releases

Fitzpatrick, Cella, Harper, & Scinto Named “Decade Award Winner” in Legal Writing by the Burton Foundation
Burton Foundation
December 16, 2009

Fitzpatrick, Cella, Harper & Scinto Receives 2008 Burton Legal Achievement Award
May 12, 2008