Michael A. Jaskolski, Partner

Biography

Mike Jaskolski has almost thirty years of experience in many different areas of intellectual property law, including development and strategic protection of inventions, know how, trade secrets, data, information, and other intellectual property using patents, trade secret procedures, data rights, technology, business tactics and relationships, agreements, and litigation.

A description of Mike's experience is provided below. Please refer to Mike's expanded bio for a more detailed story about Mike, his practice philosophies and the tools he has developed and uses to provide unparalleled client service and results.

IP Litigation
Mike develops and manages strategic direction of patent, trade secret and other litigation matters including both district court and office litigation (e.g., IPRs, CBMs, PGRs). His practice is focused on front-end deep dives to develop an unparalleled level of understanding of all aspects of a case. Knowledge is power, and early and detailed knowledge places Mike's clients in a position of power regardless of whether the client is plaintiff or defendant. Mike's almost 30 years of experience drafting and prosecuting complex patents, preparing every facet of many hundreds of opinions, working with teams of litigators on all types of cases, and developing and managing post grant Patent Office proceedings from the foundation of a unique and invaluable perspective on all aspects of litigation as well as complex prosecution and opinion work in the context of litigation.

Patent Office Litigation
Mike has handled and managed many patent post grant proceedings, including inter partes reviews (IPRs), covered business method (CBMs), and post grant reviews (PGRs). As in the case of conventional litigation, he excels in front-end deep dives to develop a consummate level of understanding of all aspects of these office litigation activities and directs collaborating team members in handling these proceedings. The Fast Focus and Quick Kill processes Mike developed are instrumental in gaining an early upper hand in office litigation matters and increasing the likelihood of claim validity and infringement.

Patent Prosecution
For much of his career, Mike has been able to straddle the fence between patent prosecution and litigation. Living in both worlds has enabled him to develop great insights into new and nuanced tactics, processes and techniques, as well as identify and take advantage of new opportunities in the gray areas where litigation and prosecution overlap. His litigation and post grant Patent Office litigation experiences have made him keenly aware of the vulnerabilities of most issued patents and has forced him to re-examination and revamp his own patent prosecution tactics over time. To this end, Mike and his teams have developed a set of patent prosecution tools referred to as our Advanced Idea Mining and Management (AIMM) process which includes more than 20 intentional patent prosecution tactics that we consider in most applications which are game changing when it comes to generating value from a single patent or an entire patent portfolio.


Mike has prepared and prosecuted many hundreds of domestic and foreign patent applications in a variety of technologies, including:

  • Semiconductor manufacturing and configurations
  • LED and other lighting technologies
  • Computer software, architecture, and networking
  • Encoding and encryption systems
  • Database systems and database management/compression algorithms
  • Business processes in various disciplines
  • Complex motor control
  • Automated control systems
  • Electronics/diagnostics testing systems
  • Medical electronics and information systems
  • Medical imaging systems/software/methods in various modalities, including NMR, PET, CT, X-ray, among others
  • Medical therapy systems
  • Agricultural equipment
  • Lighting fixtures
  • Vision/Surveillance systems
  • Building/enterprise automation systems
  • Navigational systems
  • Audio equipment
  • Battery technology
  • Device/facility cooling systems/methods
  • Bridge erection and bridge construction systems/methods
  • Conveyor systems
  • Automotive systems
  • Special effects systems/methods
  • Industrial shelving systems
  • Electronic filtering methods/systems
  • Consumer goods
  • Brewing configurations/methods

IP Asset Management Counseling, Tool Development, and Implementation
Mike routinely advises clients in the development of technology and property rights related thereto under U.S. and foreign patent laws. He has developed and implemented various IP asset management tools, including:

  • Business-oriented IP strategic plans including clear succinct business objectives and educational processes/tools to communicate the strategic plans, to client personnel having a need to know
  • Ideation sessions for capturing existing IP and developing new IP
  • Web-based automated disclosure processes/procedures
  • Innovation-defining processes/procedures (AIMM process)
  • Protection decision-making processes
  • Automated web-based patent and trademark portfolio analysis/tracking tools
  • Client IP mining tools used in due diligence endeavors
  • Competitor IP analysis tools/services
  • Web-based existing agreement/licensing tracking tools
  • Web-based "Major IP Matters" archives
  • Web-based client-specific "IP Portal"

Rights in Data Counseling
Mike counsels clients with respect to obtaining/maintaining rights to access, collect, archive, sell, or otherwise use data/information for various purposes (Rights in Data generally) that are provided by, collected from, or developed for client customers in various industries. Data/information types include:

  • Product and product configuration development, research, design, and manufacturing information/know-how
  • Web-collected purchasing/accessing/activity information
  • Web-solicited information
  • Remotely collected information related to customer system operations (e.g., remotely collected building operating information)

Cyber Counseling
Mike advises clients in all aspects of cyber-law, including:

  • Privacy and related issues
  • Copyright and related issues
  • Trademark and domain name matters
  • Digital signatures and electronic retention of records
  • Jurisdiction matters
  • Business methods
  • Development and hosting agreements
  • Terms, conditions, and disclaimers for site use
  • Encryption
  • Web posting
  • Spamming
  • Online contests

Licensing
Mike counsels clients with respect to licensable assets, identifying potential licensees and negotiating license terms.

IP Due Diligence Counseling
Mike counsels clients and provides succinct summaries regarding prudence of various types of contemplated relationships and negotiating positions based on:

  • Business-oriented analysis of client's IP assets in relevant technology disciplines and how those assets relate to a potential business partner's products/services/IP assets
  • Business-oriented analysis of potential business partner's products/services/IP assets and how those assets relate to client's business objectives

Representative Patent & Technology Clients Cree Inc., Steelcase Inc., Honda Inc., RIM Inc., Epic Systems, Tempus Inc., Ultratec Inc., Captel Inc., Rockwell International, Inc., General Electric, Cognex Corp., Wisconsin Alumni Research Foundation, JW Speaker, Inc., Tellaric, Inc., Jorgensen Conveyors, Inc., University of Michigan, Sigma Services, Inc., Bridge Technology, Inc., Versatile Products, Inc.

Legal Services

Education and Honors

  • University of Wisconsin Law School (J.D., 1992)
    • Tau Beta Pi
    • Eta Kappa Nu
    • Phi Alpha Delta
  • Marquette University (B.S.E.E., 1989)

Bar Admissions

  • Wisconsin

Court Admissions

  • U.S. District Court, Western District of Wisconsin
  • U.S. District Court, Eastern District of Wisconsin
  • U.S. District Court, Eastern District of Texas
  • U.S. Court of Appeals, 7th Circuit
  • U.S. Patent and Trademark Office

Professional Recognition

  • Named Best Lawyers' "2012 Milwaukee Patent Law Lawyer of the Year"
  • Named Best Lawyers' "2011 Milwaukee Intellectual Property Lawyer of the Year"
  • Listed in Chambers USA® (2008–present: Intellectual Property)
  • Listed in The Best Lawyers in America® (2007–present: Litigation – Intellectual Property; Litigation – Patent; Patent Law)