Michael S. Borella, Ph.D.

P: 312.913.3361
F: 312.913.0002

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 provides legal and technological advice in support of validity, infringement, patentability analyses, and litigation matters. His expertise includes networking, Internet telephony, wireless communication technologies, telecommunications, financial transactions, 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.

Representative Experience:

  • 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.

Published Articles

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.


Federal Circuit Denies En Banc Review of Berkheimer and Aatrix (June 3, 2018)

SAP America, Inc. v. InvestPic, LLC (Fed. Cir. 2018) (May 20, 2018)

Ex Parte Reis (PTAB 2018) (May 14, 2018)

USPTO Updates Patent Eligibility Guidance in View of Berkheimer (April 23, 2018)

DSS Technology Management, Inc. v. Apple Inc. (Fed. Cir. 2018) (April 3, 2018)


Berkheimer Files Response to HP's Petition for En Banc Review (April 1, 2018)

Intellectual Ventures I LLC v. Symantec Corp. (Fed. Cir. 2018) (March 22, 2018)

Whether Facts Matter in the Patent Eligibility Analysis: HP Files Petition for En Banc Rehearing (March 20, 2018)

Aatrix Software, Inc. v. Green Shades Software, Inc. (Fed. Cir. 2018) (February 18, 2018)

Berkheimer v. HP Inc. (Fed. Cir. 2018) (February 8, 2018)

Move, Inc. v. Real Estate Alliance Ltd. (Fed. Cir. 2018) (February 4, 2018)

Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. (Fed. Cir. 2018) (January 25, 2018)

Wordlogic Corp. v. Fleksy, Inc. (N.D. Ill. 2017) (January 14, 2018)

Finjan, Inc. v. Blue Coat Systems, Inc. (Fed. Cir. 2018) (January 11, 2018) 

Mastermine Software, Inc. v. Microsoft Corp. (Fed. Cir. 2017) (November 20, 2017) 


Intellectual Ventures I LLC v. Erie Indemnity Co. (Fed. Cir. 2017) (November 14, 2017)


Smart Systems Innovations, LLC v. Chicago Transit Authority (Fed. Cir. 2017) (October 23, 2017)


Visual Memory LLC v. NVIDIA Corp. (Fed. Cir. 2017) (August 15, 2017)


Cloud9 Technologies LLC v. IPC Systems, Inc. (PTAB 2017) (July 30, 2017)

Securus Technologies, Inc. v. Global Tel*Link Corp. (Fed. Cir. 2017)(July 16, 2017)

Digital Media Technologies, Inc. v. Amazon.com, Inc. (N.D. Fla. 2017) (July 9, 2017)

Prism Technologies LLC v. T-Mobile USA, Inc. (Fed. Cir. 2017) (June 28, 2017)

Alternative Facts on Patent-Eligibility from the Electronic Frontier Foundation (May 29, 2017)

Recognicorp, LLC v. Nintendo Co. (Fed. Cir. 2017) (May 1, 2017)


Thales Visionix Inc. v. U.S. (Fed. Cir. 2017) (March 9, 2017)


Personal Web Technologies, LLC v. Apple, Inc. (Fed. Cir. 2017) (February 15, 2017)


USPTO Publishes Business Method Subject Matter Eligibility Examples: Part II (January 22, 2017)


USPTO Publishes Business Method Subject Matter Eligibility Examples: Part I (January 19, 2017)


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)





Winter 2016 (snippets)
It has been over 20 months since the Supreme Court handed down the landmark decision in Alice Corp. v. CLS Bank Int’l, effectively limiting the scope of patent-eligible subject matter. In particular, software and business method patents and applications now receive a higher level of scrutiny under Alice than had previously been the case.
August 14, 2015 (snippets Alert)
MBHB snippets Alert - August 14, 2015

The Federal Circuit issued a unanimous en banc decision yesterday regarding when joint tortfeasors may be held liable for literal infringement in Akamai Technologies Inc. v. Limelight Networks, Inc. In its opinion, the court held that method claims can be literally infringed when individual steps of a claimed method are performed by more than one actor under certain circumstances.
Summer 2014 (snippets)
The CLS Bank case is the most recent of the Court’s patent eligibility decisions, and the Court unanimously affirmed the Federal Circuit's per curiam opinion (itself an effort to apply the Court’s patent eligibility jurisprudence regarding computer-based methods) that all of Alice’s claims were too abstract to meet the requirements of § 101. The claims at issue included method claims (directed, according to the Court, to methods for implementing an intermediated settlement that are well-known in the art), system claims involving implementation of the method using a general purpose computer, and computer readable-media claims for directing a general purpose computer to implement the method. None of the distinctions thought heretofore to matter between claims to methods, systems, and computer-readable media made any difference to the Court.
June 19, 2014 (snippets Alert)
MBHB snippets Alert - June 19, 2014

In the U.S. Supreme Court’s decision today in Alice Corp. v. CLS Bank International, the Court affirmed the invalidity of Alice’s patents for computer-implemented methods of reducing settlement risk. This case reached the high court after a severely split Federal Circuit could not agree whether language of the claims met the patent-eligibility requirements of 35 U.S.C. § 101. At the heart of this case was the Federal Circuit’s confusion over the impact of the Court’s 2012 decision, Mayo Collaborative Services v. Prometheus Laboratories, Inc.

Winter 2014 (snippets)
On May 5, 2011, the United States Patent and Trademark Office kicked off a new program intended to give applicants and examiners an opportunity to discuss the substance of a patent application before a formal, written examination report is mailed to the applicant. Dubbed the First Action Interview Pilot Program, it requires that the applicant electronically file, at least one day before the first action on the merits is mailed, a Request for First Action Interview.
Summer 2013 (snippets)
On May 10, 2013, the Federal Circuit handed down the much-anticipated en banc decision in CLS Bank Int'l v. Alice Corp. This case is perhaps the most important 35 U.S.C. § 101 jurisprudence regarding the patent eligibility of computer-implemented inventions since the Supreme Court's Bilski v. Kappos and Mayo v. Prometheus decisions. While the overall effect of this case remains to be seen and is likely to be a subject of heated debate, this decision has the potential to impact both patent litigation and prosecution.
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