Michael S. Borella

, Ph.D.

Overview

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, artificial intelligence and machine learning, 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.

Education
  • J.D., Chicago-Kent College of Law,

    Magna Cum Laude

  • Ph.D., University of California,

    Computer Science

  • M.S., University of California,

    Computer Science

  • B.S., Clarkson University,

    Computer Science and Technical Communications, With Distinction

Bar Admissions
  • Illinois ,
  • U.S. Patent & Trademark Office ,

Recognition

  • IAM Patent 1000

Experience

  • Developing and carrying out a large-scale patenting program for a multi-billion-dollar enterprise networking company.
  • 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.