Michael N. MacCallum

Mechanical/Electromechanical Patent Prosecution & Post-Grant Proceedings

Michigan OfficeP (248) 226-2934

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Michael MacCallum is a registered patent attorney that primarily focuses his practice on preparing and prosecuting patent applications. Mike manages clients ranging from Fortune 100 Corporations to independent inventors. He is experienced in all phases of patent procurement, from working directly with inventors to craft invention disclosures, to drafting and prosecuting patent applications, and successfully appealing applications with the Patent Trials and Appeals Board. Mike also has extensive experience in invalidity and clearance opinions. He has written and prosecuted design and utility patents for clients in industries such as automotive, construction, consumer products, manufacturing and sporting goods. He also manages the portfolios of several automotive tier-1 suppliers.

Post-Grant Proceedings, particularly Inter Partes Review (IPR), play a major role in patent enforcement. Counseling clients on these procedures, preparing IPR petitions and responding to such proceedings are becoming an increasing focus of Mike’s current practice. He has acted as lead attorney on several IPR proceedings as both the petitioner and the patent owner.

Outside of Brooks Kushman, Mike serves as a law professor for the patent application drafting course at Wayne State University, and is also an advisor at the Wayne State Patent Procurement Clinic. The clinic provides patent legal services to low-income inventors in the Metro Detroit area, offering services such as patentability searches, drafting patent applications, and prosecuting patent applications.

He has also served as a judge for the Design Day program at Michigan State University. In doing so, he is part of a small committee that selects a group of students to be honored with the Thomas Alva Edison Undergraduate Design Award, in which the named Edison Scholars are recognized as the most outstanding Senior Design Day project and given scholarship awards.

Prior to joining the firm, Mike worked as an engineer at Continental Automotive in the hydraulic brake systems unit. There he gained experience in the oversight and implementation of design-and part-changes for various components within hydraulic brake systems. Mike transitioned his engineering experience into the intellectual property field by joining Brooks Kushman as a registered patent agent in 2008.

Representative Matters

Prosecution Matters:

Serves as patent counsel and managing attorney for multiple global Tier-1 automotive suppliers on the prosecution, development, and strategy relating to their patent portfolios. Mike leads a team of lawyers and manages portfolios that relate to infotainment systems, instrument clusters, safety components, HVAC systems, drive trains, sensory systems, and autonomous (V2X) technologies.  Mike also routinely prepares invalidity and freedom-to-operate opinions.

Serves as patent counsel for a Tier-1 automotive supplier on drafting and prosecuting domestic patent applications relating to automotive. Technologies include, bearings, transmission components, and drive train systems. Works alongside in-house teams and several Brooks Kushman team members to advise the client on global prosecution strategies. Also provides counsel on freedom-to-operate opinions.

Serves as patent counsel and managing attorney for one of the world’s largest medical device company on the protection and management of a patent portfolio relating to vascular catheter systems, stent grafts and associated delivery and deployment systems.

Post-Grant Matter:

STIHL Incorporated et al v. ElectroJet Technologies, Inc. (PTAB): Lead Counsel defending ElectroJet relating to inter partes review petitions filed by STIHL. Case No. IPR2018-00018, IPR2018-00020.  Successfully defended client’s patent portfolio.

Litigation Matters:

Maxchief v. Plastic Development Group (Settlement – E.D. Michigan): Lead counsel for Defendant, Plastic Development Group (PDG) in a patent infringement matter regarding blow-molded tables. Successfully transferred the case to E.D. Michigan shortly after the Supreme Courts decision in TC Heartland. Also served as counsel to PDG during inter partes review proceedings to challenge the asserted patents validity. The Patent Trial and Appeal Board instituted on all grounds for all challenged claims. The case settled favorably shortly after transferring to PDG’s home forum and institution of the inter partes review.  Case No. 2:17-cv-12662

WP Banquet, LLC et al. v. Target Corporation et al. (Settlement – C.D. California): Lead counsel for furniture manufacturer Plastic Development Group and retailer Target accused of infringing four patents. Successfully moved to sever and stay the case for Plastic Development Group’s customer Target. Managed to secure a favorable settlement on behalf of Plastic Development Group shortly thereafter. Case No. 2:16-cv-02082

ElectroJet Technologies, Inc. v. STIHL Incorporated (E.D. Virginia) – Representing Electrojet in patent lawsuit relating to engine timing control. Case No. 2-17-cv-00224

Organizations and Affiliations

American Intellectual Property Law Association

Intellectual Property Owners Association, U.S. Patent Office Practice Committee

U.S. Patent and Trademark Office

Michigan Intellectual Property Law Association

State Bar of Michigan

Wayne State University Law School Patent Procurement Clinic, Advisor

Recognitions

“IAM Patent 1000 Recommended Individual,” Intellectual Asset Management, 2020

“Rising Star,” Michigan Super Lawyers, Intellectual Property, 2016-2020

“Up and Coming Lawyer,” Michigan Lawyers Weekly, 2018

“Top Lawyer,” DBusiness Magazine, 2021

Press Releases

    Client Alerts

      Webinars

        Media Coverage

        Featured, “Ford Wins Another PTAB Review of Paice Hybrid Car Patent,” Law360, November 2015

        Publications

        Co-Author, PTAB Establishes Criteria Governing Follow-On Petitions for AIA Post-Grant Proceedings

        Presentations

        Co-Presenter, “2017 IP Litigation and PTAB Year in Review,” BK Webinar, February 2018

        Education

        J.D., Wayne State University Law School, cum laude

        B.S., Mechanical Engineering, Michigan State University

        Admissions

        U.S. District Court, Eastern District of Michigan

        Michigan Supreme Court

        United State Patent and Trademark Office 

        Practice Area and Industries