Michael K. Kelly

Michael K. Kelly Member

P: 602.262.5824
F: 602.495.2630
L: Phoenix

Mr. Kelly is Chair of the firm’s Intellectual Property Practice Group.  He has over 27 years of experience in dealing with intellectual property related matters.  Mr. Kelly has extensive transactional and litigation experience representing plaintiffs and defendants in patent, trademark, copyright, trade secret, contract, licensing, and technology transfer disputes, including first chair jury trial experience in federal district court. Mr. Kelly is well-versed in patent, trademark and copyright (including software) prosecution and infringement, trade secrets and unfair competition, international dispute resolution, and intellectual property insurance and legal opinions.

Mr. Kelly is also familiar with the rules and procedures governing United States patent and trademark prosecution, as well as the evolving protocols in Europe, the Middle East and Asia.

Mr. Kelly’s technical expertise includes encryption, cyber security, medical imaging, software architecture, data cache and database systems, microprocessors, optics, semiconductor processing and wafer fabrication technologies, cloud computing, advanced weapons systems, medical devices, supersonic aircraft design, automotive systems, business methods, avionics, credit and financial services, mobile devices, smart phone applications, and consumer electronics.

Areas of Focus

  • Patent Procurement, Enforcement, and Defense
  • Freedom to Practice, Validity/Invalidity, and Patentability Opinions
  • International Patent, Trademark, Copyright, and Copyright Infringement
  • International Dispute Resolution
  • Mergers, Acquisitions, and IP Asset Collateralization

Articles, Publications and Presentations

  • Presenter, "Trending Cybersecurity Breach Vectors," Arizona Business Council (May 2017)

  • Co-presenter, "Cybersecurity and SEC Reporting: What Needs to Be Reported, and When," Association of Corporate Council Arizona (2016)

  • Guest Lecturer, Patent Law, Summit Law School (2016)

  • Contributor, “Protection or Privacy?,” AZ Business Magazine (2016)

  • Panelist, “Emerging Cybersecurity Disruptive Technology Strategies,” 5th Annual ATIC-ACTRA/AZ InfraGard Program (2015)

  • Co-author, “The Evolving Cyber Security Regulatory Environment,” Hospitality Technology Magazine (2015)

  • Author, "Smartflash v Apple,” Intellectual Property Magazine (2015)

  • Co-presenter, “Patent Prosecution Practice Tips,” CLE in the Gardens: Cultivating Best Practices in Intellectual Property Law, State Bar of Arizona (2015)

  • Contributor, “What to Do If Someone Is Infringing on Your Patent,” InsideCounsel Magazine (2015)

  • Co-presenter, “Cybersecurity: Minimizing Risk and Responding to Breaches,” Jennings, Strouss & Salmon and the AZ Chamber of Commerce & Industry (2015)

  • Co-presenter, “Cybersecurity: Minimizing Risk and Responding to Breaches,” Lucid Agency + Google 2015 Digital Summit (2015)

  • Contributor, “Data Security Experts Reveal the Biggest Mistakes Companies Make with Data & Information Security,” Digital Guardian (2015)


Digital Media


Honors, Appointments and Awards

  • Listed, The Best Lawyers in America (2018) in the category of Patent Law


Professional Affiliations

  • State Bar of Arizona
    Intellectual Property Law Section, Executive Council Member
  • Member, State Bar of Wisconsin
  • Member, American Intellectual Property Law Association
  • Member, Institute of Electrical and Electronics Engineers Licensing Executives Society
  • Member, International Trademark Law Association
  • Member, Federal Circuit Bar Association
  • Teen Addiction Anonymous
    Board of Directors

Admitted to Practice

  • Arizona, 1992
  • Wisconsin, Inactive

Court Admission

  • Wisconsin Supreme Court, 1987
  • U.S. District Court, Eastern District of Wisconsin, 1987
  • Arizona Supreme Court, 1991
  • U.S. District Court, District of Arizona, 1992
  • U.S. Court of Appeals, Ninth Circuit, 2002
  • U.S. Patent And Trademark Office, 1988

Education

  • J.D., University of Illinois, 1987
  • B.S., Marquette University, Electrical & Computer Engineering, 1991
  • B.S., University of Illinois, Mechanical & Industrial Engineering, 1983