Michael R. Houston

Partner

Overview

Michael R. Houston is a partner and intellectual property attorney with Foley & Lardner LLP, where his practice focuses on patent challenges before the USPTO, and patent litigation at the trial and appeal levels across a wide array of technology areas. Dr. Houston has litigated patents involving pharmaceuticals, medical devices, biorenewable fuels, microelectronics fabrication and packaging, electronics, and general chemical and polymer processing, among others. More recently, Dr. Houston has been heavily involved in inter partes review (IPR) proceedings at the U.S. Patent Office, and is vice chair of the firm’s Patent Office Trials Practice. He also is a member of Foley’s IP Litigation and Chemical, Biotechnology & Pharmaceutical Practices, and the Life Sciences Industry Team.

Based on his graduate work and multiple years of R&D experience at a start-up company in the Bay Area, Dr. Houston’s technical knowledge further encompasses various aspects of biotechnology, nanotechnology, optics and ophthalmic lenses, polymerization chemistry and polymer processing, composite resins, injection molding, and micromachining.

Dr. Houston has litigated cases in several districts across the U.S., with a particular focus on Patent Office proceedings and investigations before the International Trade Commission (ITC), and has taken numerous cases to trial (both jury and bench). Dr. Houston’s experience at the appellate level includes many cases before the Court of Appeals for the Federal Circuit. Dr. Houston has also managed multiple patent cases filed in Singapore.

Recognition

In 2016, Dr. Houston was recognized by The Legal 500 for his work in patent prosecution.

Admissions

Dr. Houston is admitted to practice before the USPTO, and dedicates a part of his practice to patent prosecution and counseling. Dr. Houston is also admitted in the Northern District of Illinois, the U.S. Court of Appeals for the Federal Circuit, and numerous other districts across the United States.

Education

Dr. Houston is a graduate from the Northwestern University School of Law (J.D., cum laude), the University of California at Berkeley (Ph.D.), and the Georgia Institute of Technology (B.S., summa cum laude).

Selected Patents and Patent Applications

A sampling of the 43 U.S. and foreign patents and patent applications co-invented and co-authored by Dr. Houston includes:

  • Method of Drying Passivated Micromachines by Dewetting from a Liquid-Based Process, US 6,114,044
  • Expandable Polymeric Fibers and Their Method of Production, US 6,221,486
  • Near-Net-Shape Polymerization Process and Materials Suitable for Use Therewith, US 6,380,314
  • Hollow Polymeric Fibers, US 6,387,492
  • Precision Composite Lens, US 6,416,690
  • Morphology Trapping and Materials Suitable for Use Therewith, US 6,419,858
  • Precision Composite Article, US 6,570,714
  • Method for Synthesizing Thermo-Expandable Polymeric Microspheres, US 6,617,364
  • Microcellular Foams, Their Method of Production, and Uses and Products Thereof, US 6,638,984
  • Morphology Trapping and Materials Suitable for Use Therewith, US 6,733,700
  • Morphology Trapping and Materials Suitable for Use Therewith, US 6,746,632
  • Precision Integral Articles, US 6,749,779
  • Near-Net-Shape Polymerization Process and Materials Suitable for Use Therewith, US 6,821,458
  • Near-Net-Shape Polymerization Process and Materials Suitable for Use Therewith, US 6,874,885
  • Smart Polymer-Coupled Bioactive Entities and Uses Thereof, PCT US99/12975
  • Biomedical Molding Materials from Semi-Solid Precursors, 10/480,765, pending application
  • Photochromic Articles and Methods For Making Them, 10/433,020, pending application

Representative Matters

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Represented all defendants in a patent infringement case in Delaware concerning synthetic renewable diesel fuels. In addition, our client filed an inter partes reexamination proceeding and inter partes review proceeding with respect to two separate patents, including the '094 patent at issue in the 2nd DE suit. Syntroleum also filed an additional IPR on a 3rd related Neste patent, which is pending.
Representing defendants on a patent infringement case in Delaware around synthetic renewable diesel fuels.
Foley’s client, Biotage AB, was sued in district court for infringement by a competitor, Scientific Plastic Products (SPP). Our attorneys succeeded in having all claims of the three asserted SPP patents rejected by the Patent Office in three related inter parte reexaminations. Foley defended the Patent Office’s decisions on appeal to the Federal Circuit, obtaining an affirmance in a precedential written opinion issued in October, 2014 and denial of SPP’s petitions for rehearing. In 2015, the Supreme Court denied SPP’s petition for cert. Based on the Federal Circuit's decision, the district court dismissed all infringement claims with prejudice. All claims of two additional patents asserted by SPP in a separate lawsuit stand rejected by the Patent Office in other reexaminations handled by Foley. That second case remains stayed pending final outcome of the other reexaminations.

Insights