Barclay Damon
Barclay Damon

Michael A. Oropallo

Michael A. Oropallo

Partner

p: 315-425-2831

f: 315-703-7367

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Syracuse Office

Barclay Damon Tower
125 East Jefferson Street
Syracuse, New York 13202

Mike Oropallo is a litigator with a rich history of representing clients in complex patent, trademarks, and copyright cases including civil trials, negotiating agreements, licensing of intellectual property and technology, valuation of assets, IP due diligence, and mergers and acquisitions. His national practice is focused on clients in the outdoor and archery industries. Mike's technical background and industry knowledge give him a thorough understanding of his clients’ businesses and complex intellectual property needs. Mike regularly represents clients litigating intricate technological and mechanical innovations, on infringement issues, and on the protection and enforcement of related intellectual property assets. In this capacity, Mike partners with his clients on related monetization and commercialization issues.

Mike’s successes and passion for the outdoors have led to his representation of many high profile clients on a variety of wildlife laws and issues, including those involving the Endangered Species Act, the Migratory Bird Treaty Act, the Marine Mammal Protection Act, The Convention on International Trade in Endangered Species (CITES), and the Lacey Act. He is also a sought after speaker on domestic and international wildlife laws, permitting and on import/export issues, including for both sport hunted wildlife, zoos, and natural history museums.

Mike has served in a variety of capacities for many prominent organizations including The Pope & Young Club, the National Taxidermists Association, the Roosevelt Wild Life Station, and including as an officer or board member for several natural history museums. He is also a member of the National Museum Alliance, and is both the co-chair of the Patent Law Committee and an executive officer of the New York State Bar Association Intellectual Property Section.

Representative Experience

  • Lead first chair trial counsel on patent, copyright and trademark infringement cases, including for jury trials, Markman hearings, and on preliminary injunction, summary judgment and other hearings and motions
  • Trusted go-to legal counsel to the archery and outdoor industry.
  • Precedent setting trial verdict upheld on appeal regarding the copyrightability of realistic depictions of animals in three-dimensional sculptural works.
  • Lead coordinating and IP due diligence counsel for numerous acquisitions and mergers and on multi-million dollar deals for both individual companies and private equity.
  • Litigation, trial and appeal of toxic tort and environmental contamination and cost recovery cases involving various substances.
  • Lead member of team on litigation regarding the Endangered Species Act listing of the Polar Bear and related appeals.
  • Regular presenter on trial tactics, IP litigation, and environmental litigation issues to state and national audiences.
  • Regular presenter on wildlife laws, including the Endangered Species Act, the Migratory Bird Treaty Act, and Lacey Act, to state and national audiences.
  • Successfully moved to dismiss claims in Clean Water Act Citizen Suit upon grounds that agency was diligently prosecuting case, compliance with permit and order, and related defenses.
  • Obtained favorable claims construction in patent infringement case involving color science and lighting related to natural light devices.
  • Successfully obtained Temporary Restraining Order and Preliminary Injunction against former archery equipment designer related to proprietary cam and related technologies.
  • Successfully defended glove manufacturer at trial on claim that mark caused likelihood of confusion with registered mark for ski gloves and related merchandise. Proximity of house mark eliminated likelihood of confusion.
  • Successfully moved for finding of civil contempt for violation of injunction in copyright infringement case involving wearable art in the form of pewter wildlife art pins.
  • Successfully defended claim of trademark infringement related to billiard tables and based upon defense of the sale of authentic goods by manufacturer.
  • After over two years of litigation, successfully argued that New York Not-for-Profit Corporation Law applied to attempted merger of local council of BSA, and that notice to the Attorney General and Court were required for the transfer of its assets.
  • Obtained a finding of infringement at trial involving design and utility patents for snow plows and material moving devices.
  • Successfully moved to change venue from Western District of Wisconsin to Western District of New York in postage meter case.

Practice Areas

Education

  • Ohio Northern University, J.D., cum laude, Associate Editor, Law Review, 1988
  • State University of New York at Oswego, B.A., 1981

Admitted To Practice

  • New York, 1989
  • Pennsylvania, 2003
  • U.S. Court of Appeals, 9th Circuit
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Supreme Court
  • U.S. Court of Appeals, 2nd Circuit
  • U.S. Court of Appeals, 3rd Circuit
  • U.S. Court of Appeals, 4th Circuit
  • U.S. Court of Appeals, 5th Circuit
  • U.S. District Court, Northern, Southern, Eastern and Western Districts of New York
  • U.S. District Court, Western District of Pennsylvania
  • U.S. District Court, Western District of Wisconsin

Memberships & Affiliations

  • American Bar Association
  • American Arbitration Association – Panel of Neutrals
  • International Trademark Association – Panel of Neutrals
  • New York State Bar Association, Treasurer of Bar Section, Patent Law Committee of the Intellectual Property Section, Co-Chair, and President’s Special Task Force for Federal Discovery and Case Management Issues, Appointed Member, Dispute Resolution, Executive Committee
  • Copyright Society of the USA
  • Defense Research Institute
  • Innovation American Inn of Court, Member
  • Onondaga County Bar Association
  • Cayuga County Bar Association

Civic Activities

  • Taxidermy Hall of Fame, Board of Directors
  • Roosevelt Wild Life Station, Collections Committee
  • Cayuga County Chamber of Commerce, Former Chair and Member of the Board of Directors
  • Cayuga County Community Health Network, Inc., Former Member of the Board of Directors
  • Onondaga County Council on Alcohol and Substance Abuse, Former President and Member of the Board of Directors
  • National Taxidermy Association, former legal counsel and advisor
  • Trial Lawyers Care, Pro bono Counsel to victims of September 11, 2001 tragedy
  • East Hill Family Medical, Inc., Former Chair and Member of the Board of Directors

Speaking & Publications

  • "Licensing 101: What to Look for in an Agreement to License Patents or Other Intellectual Property Rights," Archery Trade Association, Indianapolis, Indiana, January 10, 2017
  • “The Evolving State of Design Patent Damages and the Apple v. Samsung Case,” New York State Bar Association: Inside, Fall 2016
  • "Why the Northern Long-eared Bat May Impact Your Practice," Buffalo Law Journal, July 7, 2016
  • "Legal Developments and New Legislation Involving Wildlife Laws and Issues," National Taxidermists Association Annual Meeting and Convention, June 12, 2016
  • "What Will Become of Alice?" New York State Bar Association, Bright Ideas, Spring/Summer 2016
  • "Wright Brothers Summary," IP Innovation Inn of Court, March 9, 2016
  • "IPR process reshapes patent litigation," Buffalo Law Journal, January, 25, 2016 
  • "Patent Law Developments Post-America Invents Acts," The Archery Trade Association, January 5, 2016
  • "What Energy Lawyers Need to Know About the Endangered Species Act," American Bar Association Energy Litigation, Winter 2015
  • "The Impact of Teva Pharmaceuticals: Observations from the Trenches," New York State Bar Association, Bright Ideas, Fall 2015
  • "Patent Trolls and Intellectual Property Litigation," Archery Trade Association Trade Show, January 2015
  • "Federal Circuit Addresses the Role of District Courts in Assessing Patent Damages, Expert Witness Testimony, and Reasonable Royalty Evidence," New York State Bar Association, Bright Ideas, Co-Author, Winter 2014
  • Trial Objections, James Publishing, Contributing Author 
  • Breakthrough Magazine, a nationally-distributed wildlife art magazine, Columnist
  • “Patent Law Reform: Would Our Founding Fathers Approve?,” Intellectual Property Law Section Fall Meeting of the New York State Bar Association, October 2011
  • “When Is “Knowledge” Knowledge? Supreme Court Applies Criminal Standard to Patent Infringement Inducement Statute,” Bright Ideas, Intellectual Property Law Section of the New York State Bar Association, Co-Author, Fall 2011
  • “Trademark Litigation Essentials,” New York State Bar Association, March 2011
  • “Not All Patents Are Created Equal,” New York State Bar Association General Counsel Seminar, September 2010
  • “First, Do No Harm; Second, Do Some Good – Tips for Effective Cross-Examination of the Plaintiff’s Treating Physician,” Defense Research Institute, July 2010
  • “Protecting Your Intellectual Property: Patents, Copyrights, and Trademarks,” Stardust Entrepreneurial Institute’s Coffee & Content Workshop, June 2010
  • “Electronic Discovery: Strategic and Practical Considerations for Federal Court Litigation,” E-Discovery Connection, February 2010
  • “Transfer Motions in Patent Cases,” Bright Ideas, Intellectual Property Law Section of the New York State Bar Association, Co-Author, Winter 2009
  • “Recent Patent Developments Around the World,” Intellectual Property Law Section Meeting at the New York State Bar Association Annual Meeting, January 2009
  • “Trade Secrets and Agreements Not to Compete: New York Non-Competes,” Defense Research Institute, Co-Author, June 2008
  • “Survey of Confidentiality Agreements, Restrictive Covenants in Trade Secret Law,” Defense Research Institute, May 2008

Honors

  • Martindale-Hubbell “AV” Peer Review Rated for Very High to Preeminent Ethical Standards and Legal Ability
  • New York State Bar Association, Empire State Counsel® Honoree, 2009-2010
  • Selected by Peer Review for Inclusion in Super Lawyer Directory 2011-2016 for Intellectual Property Litigation
  • ALM Top Rated in the field of Energy, Environmental and Natural Resources for Environmental Law and Litigation - Environmental

Prior Experience

  • Hiscock & Barclay, LLP, Partner
  • Hancock & Estabrook, LLP, Partner
  • Schlumberger, Geologic Engineer

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