Michael S. Borella is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm's Software & Business Methods Practice Group. Dr. Borella conducts legal research and provides technological advice in support of validity, infringement and patentability analyses, and litigation matters. His expertise includes networking, Internet telephony, wireless communication technologies, telecommunications, cloud computing, routing, TCP/IP, computer graphics and imaging, voice and facial recognition, robotics, and mobile applications.
Dr. Borella has drafted or been involved in the prosecution of hundreds of patents in the U.S., as well as in other jurisdictions. He has experience in numerous phases of patent litigation, including invalidity analysis, discovery, motion practice, and claim construction. His practice also includes patentability, validity, and infringement analyses, as well as client counseling with respect to the procurement of all types of intellectual property rights.
Dr. Borella has written extensively on the patent-eligibility of computer-implemented inventions, and has been a featured presenter for several seminars on the topic as well.
Prior to joining MBHB, Dr. Borella served on the management teams of Fastmobile, UTStarcom, and 3Com, and was in charge of several large software engineering projects, managing over 75 software engineers on two continents. He also held the position of adjunct professor at Northwestern University, and has lectured on patent law at the Chicago-Kent College of Law. Dr. Borella is a named inventor on more than seventy U.S. patent applications and has authored a similar number of academic and technical papers related to networking, telecommunications, and computer science.
Preparing and prosecuting patent applications directed to wireless communications systems, networks, and protocols for a Fortune 100 communications service provider.
Won a resounding victory for a patent owner in an Inter Partes Review (IPR) involving telecommunications technology. Institution was denied.
Representing a global telecommunications operator in U.S. litigation matters involving patents directed to Internet telephony, security, and network management.
Managing a worldwide patent prosecution portfolio for a company specializing in software, cloud computing, and mechanical products.
Advising several software startup companies regarding their patent and trademark portfolios.
Conducting freedom to operate and patentability analyses for several software gaming entities.
Successfully overcoming numerous patentable-subject-matter rejections from the U.S. Patent and Trademark Office.
M. Borella, "Food Allergies in Public Schools: Toward a Model Code," Chicago-Kent Law Review, vol. 85, iss. 7, pp. 761-790, 2010.
M. Borella, "Lawful Packet Data Intercept for CDMA Wireless Networks," Wireless Security Perspectives, pp. 3-7, 2003.
M. Borella, "On Estimating Long Range Dependence of Network Delay," International Journal of Chaos Theory and Applications, vol. 6, iss. 4, 2001.
M. Borella, "Measurement and Interpretation of Internet Packet Loss," Journal of Communications and Networking, vol. 2, iss. 2, pp. 93-102, 2000.
M. Borella, "Source Models of Network Game Traffic," Computer Communications, vol. 23, iss. 4, pp. 403-410, 2000.
Published Articles - Patent Docs
The following publications include links to the Patent Docs weblog, a site focusing on patent law news.
Gust, Inc. v. Alphacap Ventures, LLC (S.D.N.Y. 2016); O2 Media, LLC v. Narrative Science Inc. (N.D. Ill. 2017) (January 10, 2017)
Verint Systems Inc. v. Red Box Recorders Ltd. (S.D.N.Y. 2016) (December 13, 2016)
Amdocs (Israel) Limited v. Openet Telecom, Inc. (Fed. Cir. 2016) (November 27, 2016)
Federal Circuit Narrows USPTO's Definition of "Covered Business Method” (November 21, 2016)
USPTO Issues Memorandum on Recent Subject Matter Eligibility Decisions (November 2, 2016)
Synopsys, Inc. v. Mentor Graphics Corp. (Fed. Cir. 2016) (October 30, 2016)
Intellectual Ventures I LLC v. Symantec Corp. -- Judge Mayer on the First Amendment (October 24, 2016)
September Was a Good Month for Patent Eligibility in the District Courts (October 16, 2016)
Iron Gate Security, Inc. v. Lowe's Companies, Inc. (S.D.N.Y. 2016) (September 21, 2016)
McRO, Inc. v. Bandai Namco Games America Inc. (Fed. Cir. 2016) (Sept. 13, 2016)
Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. (E.D. Tex. 2016) (Aug. 31, 2016)
Of Technical Tools and Problems: Going Beyond the Two-Prong Alice Test (Aug. 21, 2016)
Netsirv v. Boxbee, Inc. (PTAB 2016) (Aug. 17, 2016)
In re Magnum Oil Tools Int'l, Ltd. (Fed. Cir. 2016) (Aug. 14, 2016)
Electric Power Group, LLC v. Alstom S.A. (Fed. Cir. 2016) (Aug. 1, 2016)
Shortridge v. Foundation Construction Payroll Service, LLC (Fed. Cir. 2016) (July 24, 2016)
Open Parking, LLC v. Parkme, Inc. (W.D. Penn. 2016) (July 7, 2016)
USPTO Issues Memorandum Regarding Enfish and TLI (May 26, 2016)
In re TLI Communications LLC Patent Litigation (May 22, 2016)
Section 101 and the Growing Alice Backlash (May 15, 2016)
Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016) (May 12, 2016)
Peschke Map Technologies LLC v. Rouse Properties Inc. (E.D. Va. 2016) (Mar. 22, 2016)
Advanced Marketing Systems, LLC v. CVS Pharmacy (E.D. Tex. 2016) (February 1, 2016)
Voxathon LLC v. Alpine Electronics of America, Inc. (E.D. Tex. 2016) (January 25, 2016)
Motio, Inc. v. BSP Software LLC (E.D. Tex. 2016) (January 11, 2016)
eDekka LLC v. 3balls.com, Inc. (E.D. Tex. 2015) (January 6, 2016)
Inphi Corp. v. Netlist, Inc. (Fed. Cir. 2015) (November 17, 2015)