Michael Valek is an experienced litigator and former judge who represents clients in patent disputes and other intellectual property matters across all technologies. He has extensive, first-chair experience before the Patent Trial and Appeal Board (PTAB) as well as in district court and before the Federal Circuit. His practice also includes strategic counseling, including litigation-related investigations, IP due diligence, and portfolio management.
Mr. Valek previously served as an Administrative Patent Judge on the PTAB, where he presided over more than a hundred inter partes (IPR) and post grant review proceedings and authored hundreds of decisions involving patents and applications from the biotechnology, chemical, and electrical technology centers. Mr. Valek also served on the committee advising the Director on institution decisions and on interagency assignment to the Trademark Trial and Appeal Board assisting in the adjudication of trademark cancellation and opposition proceedings.
Prior to his public service, Mr. Valek was a partner at Vinson & Elkins LLP and of counsel at Gibson Dunn & Crutcher LLP. He has counseled clients concerning inventions in myriad technical fields, including software, cloud computing, search architecture, wireless communications, power systems, medical devices, engineered proteins, and numerous pharmaceutical products. Some of his representative matters include:
- Represented Petitioner in IPR challenges to four patents for drug-eluting polymer implants, obtained institution on all four petitions, and successfully argued hearing to stay parallel district court litigation.
- Represented Patent Owner in IPR challenge, identified flaw in Petition and successfully argued to reject Petitioner’s attempt to correct. Institution denied.
- Defended major technology company in infringement suit accusing search functionality in operating system software, led team to develop all technical evidence/witnesses, argued claim construction hearing resulting in favorable construction/settlement.
- Represented major technology company as plaintiff in multi-patent suit relating to smartphone software features, presented and cross-examined all technical and source code witnesses for one feature set to prepare infringement and validity positions for trial.
- Defended accused infringer in competitor-brought infringement suit involving engineered enzymes, cross-examined lead witnesses at deposition and trial to obtain admissions that formed the basis for preliminary injunction denial, non-infringement jury verdict, and JMOL of invalidity. Successfully defended judgment on appeal.
Mr. Valek also previously served as a law clerk to Judge Timothy B. Dyk of the U.S. Court of Appeals for the Federal Circuit.
Mr. Valek received his law degree from the University of Texas School of Law, where he graduated with high honors and was named Order of the Coif. He earned a BS in Biochemistry with honors from the University of Arizona, where he conducted research synthesizing chemical models to study electron transfer in biological systems for four years prior to entering law school.
Mr. Valek is admitted to practice in Texas as well as before the U.S. Patent and Trademark Office, the Federal Circuit, and several district courts in Texas and Wisconsin.