Overview

Michael D. Kaminski is a partner and intellectual property lawyer with Foley & Lardner LLP. He has litigated, prosecuted, and counseled clients primarily in the chemical, pharmaceutical, and chemical engineering fields. Mr. Kaminski conducts "first chair" litigation in Federal District Court. Litigation in which he has been involved range from pharmaceuticals, LEDs, automotive safety devices, radiological contrast agents, paint spray booth additives, and distillation column packing to sports equipment and food technologies. He also has appellate court experience. Mr. Kaminski is a member of the firm's IP Litigation, Mechanical & Electromechanical Technologies, Chemical, Biotechnology & Pharmaceutical Practices.

Mr. Kaminski is co-managing partner of the firm's Tokyo office. He was the IP Department's operations chair for a number of years, responsible for managing the department's support structure, best practices and quality assurance initiatives, and training.

Prior to law school, Mr. Kaminski worked as a research chemical engineer for a major oil company and for a major chemical company.

Recognition

Mr. Kaminski has been accorded the professional designation of "Master Advocate" by the National Institute of Trial Advocacy. He has also been Peer Review Rated as AV® Preeminent™, the highest performance rating in Martindale-Hubbell's peer review rating system. In addition, Mr. Kaminski was recognized in the Chambers Global 2014 and 2015 guides for his extensive knowledge of Japanese IP law and matters pertaining to the chemical, pharmaceutical and chemical engineering arenas and was praised for the skilled and experienced approach he takes to handling matters. He has also been selected to appear in IP Stars from Managing IP (MIP) magazine for his intellectual property work in Japan and Washington, D.C. (2014 and 2015). Mr. Kaminski has additionally been recognized by The Legal 500 for his work in intellectual property in the area of international firms and joint ventures in Japan (2010, 2011) and in the area of corporate mergers & acquisitions: Japan: International firms and joint ventures (2011).*

Affiliations

Mr. Kaminski was on the board of directors of the AIPLA. He was an adjunct professor of law at The American University and also at George Mason University and Temple University (Tokyo) law schools. He has also taught at the John Marshall School of Law and the University of Michigan (at both undergraduate level and law school). He was chair of the American Chemical Society's Division of Chemistry and the Law and recipient of the ACS's Middlekauf Award. Mr. Kaminski was also selected as a Fellow of the AIPLA. In addition, he was an "Invited Research Scholar" at Japan’s Institute of Intellectual Property.

Thought Leadership

Mr. Kaminski has written over four dozen articles on patent prosecution and litigation. His articles have been published in such periodicals as Journal of the Patent and Trademark Office Society, Patent World, American University Law Review, and in AIPLA publications. Mr. Kaminski was on the editorial boards of the AIPLA Quarterly Journal, IP World, Patent World, and IP Strategy & Management, and has edited books on patent law. He also speaks frequently on patent litigation and patent law topics.

Education

Mr. Kaminski graduated from the University of Michigan (B.S., chemical engineering; B.S., chemistry; B.A., communications, all with high honors, 1982; J.D., cum laude, 1986). He served as executive editor of the Michigan Yearbook of International Legal Studies.

Admissions

Mr. Kaminski is admitted to practice in Illinois, the District of Columbia Court of Appeals, the Court of Appeals for the Federal Circuit, the U.S. Supreme Court, the Sixth Circuit Court of Appeals, the U.S. Patent and Trademark Office, and the U.S. District Court for the Districts of Nebraska, Connecticut and Northern Texas. He is also a member of the Trial Bar, U.S. District Court for the Northern District of Illinois.

*The Illinois Supreme Court does not recognize certifications of specialties in the practice of law and no award or recognition is a requirement to practice law in Illinois.

Representative Matters

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In January 2014, Dainippon Sumitomo Pharma Co., Ltd entered into an agreement with Edison Pharmaceuticals, Inc. ("Edison") that amends the license agreement between the two companies relating to EPI-743 and EPI-589, which are therapeutic agents under development for mitochondrial disease. On the same date, a joint research agreement for discovery of novel candidate pharmaceutical compounds targeting cellular energy metabolism and a stock purchase agreement relating to DSP’s purchase of an equity interest in Edison were also entered into. Foley & Lardner LLP client Dainippon Sumitomo Pharma Co., Ltd. manufactures and sells pharmaceuticals, food ingredients, food additives, veterinary medicines, diagnostics, and others in Japan, China, North America, and internationally. The company offers various pharmaceutical products and develops and sells ingredients and additives and offers veterinary medicines for companion animals, including dogs and cats; and farm animals, such as cattle, swine, horses, and cultured fish. Additionally, the company develops point-of-care testing diagnostic products for infectious diseases. The company was founded in 1897 and is headquartered in Osaka, Japan. Dainippon Sumitomo Pharma Co., Ltd. operates as a subsidiary of Sumitomo Chemical Co., Ltd. Edison Pharmaceuticals is a biotechnology company based on the discovery and development of low-molecular therapeutic drugs for the treatment of Mitochondrial disease. Founded in 2006, it is headquartered in Mountain View, California, USA.
Acted as petitioner’s counsel in an inter partes review filed after Nichia was sued for patent infringement in district court. The inter partes review was instituted by the Patent Trial & Appeal Board (PTAB). On February 11, 2014 the PTAB issued its final written decision holding all challenged claims unpatentable.
Represented a leading tier one manufacturer in the automobile industry in a complex patent infringement case against an obstinate opponent in which we have filed nine motions to compel. Of the five motions to compel that we filed on behalf of our client and that have been ruled upon, we have won all five. One other motion to compel remains pending and three were dismissed because the parties resolved the issues after the motions were filed.