Tom Makin focuses his practice on patent litigation, in federal court and before the International Trade Commission. He also participates in patent review proceedings before the Patent and Trademark Office, and counsels clients regarding both substantive patent law and patent valuation and licensing issues.
Mr. Makin represents plaintiffs and defendants across a wide range of technological fields: vehicular safety and propulsion systems, LEDs, smartphone applications, rechargeable batteries, imaging systems, medical devices, and semiconductor fabrication and circuitry.
He has been recognized for excellence in practice from a number of legal publications, including the 2015 editions of The Legal 500 United States and IAM Patent 1000 – The World’s Leading Patent Practitioners. IAM Patent 1000 notes that “Thomas Makin is the subject of effusive praise: ‘His knowledge of case law is something to behold and he has a great imagination, always willing to look at things in different ways and come up with new ideas. He takes the time to understand your patents (and other intellectual property), and does things when he says he’s going to do them. He exhibits real mental fortitude.’”
Mr. Makin’s clients include Toyota, Micron, Nichia, Olympus, Nippon Steel, Airbus, Fan Vision Entertainment, and Fresh Direct.
Recent Representative Experience
- Mr. Makin represented Toyota, as lead counsel, in multiple cases originally filed on 24 vehicular safety patents in the Eastern District of Texas. Toyota won transfer on mandamus to the Eastern District of Michigan, a stay pending resolution of 12 inter partes review petitions that ultimately resulted in the cancellation or withdrawal of significant patent claims, and voluntary dismissal with prejudice by plaintiff. American Vehicular Sciences v. Toyota et al. (E.D. Tex., E.D. Mich.)
- Mr. Makin represented Elpida (a Micron subsidiary) in an 8 patent semiconductor litigation involving district court actions and an ITC investigation. Elpida achieved a successful settlement after summary determination briefing. Intellectual Ventures v. Elpida et al. (D. Del., W.D. Wash., ITC)
- Mr. Makin represented Toyota in a litigation relating to vehicle telematics, and Airbus in a litigation relating to fuel tank inerting systems. The clients were granted stays pending inter partes reexamination. All asserted claims, in both litigations, stand rejected, pending appeal. Fernandez v. Toyota (C.D. Cal.); Firepass v Airbus (E.D.N.Y.)