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 continues to leverage his three decades of complex civil trial experience to counsel his clients on a myriad of legal and business issues. First and foremost, Mike has developed a reputation for knowing his clients' businesses, and tailoring his legal services to those issues that are important to the client, and that will further the client's business success.

With a penchant for simplifying complex legal issues, Mike has successfully litigated and tried the most complex of civil matters, be it intricate technological or mechanical innovations, on cutting edge scientific and medical issues, or on matters involving the environment, wildlife laws and how climate change impacts decisions. He has handled cases in virtually all fifty states, increasingly working with clients and professionals across our borders.

Mike's trial and litigation experience has also taught him how and what to avoid in transactional issues. He has used that knowledge to counsel his clients on the negotiation of agreements, such as for licensing of IP and technology, the protection and enforcement of valuable IP assets, and the acquisition of patents, innovations and other tangible and intangible assets, including due-diligence for mergers and acquisitions.

He has also used that experience, and the respect and relationships he has built with his clients and fellow practitioners, to act as an arbitrator, mediator, and neutral in resolving expensive and complex legal disputes.

Mike is an avid outdoorsman and conservationist. He is passionate about the legal and practical aspects of our changing world, and how this is affecting individuals, businesses, development, and our progress as a human species. This has led to his representation of many 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, and the Lacey Act.

Mike serves on, at the direction of, or has done pro bono work for many not-for-profit boards and organizations, such as The Pope & Young Club, the National Taxidermists Association, the Roosevelt Wild Life Station, and several other natural history museums, and is a member of the National Museum Alliance.

He is also involved in the protection of our natural resources along with our collective right to enjoy our environment, be it as a hunter, photographer or other enthusiast. As a result, Mike continually monitors budding legal issues, legislation and scientific controversies.

Representative Experience

  • First chair trial of patent, trademark, and copyright cases.
  • First chair trial attorney on dozens of jury cases.
  • Lead counsel on Markman hearing for defendants in multi-party patent infringement case
  • Granted summary judgment of invalidity on obvious grounds for industry group of similarly situated defendants
  • Trial verdict upheld on appeal regarding the copyrightability of realistic depictions of animals in three-dimensional sculptural works.
  • Lead counsel on IP due diligence for numerous acquisitions and mergers and on multi-million dollar deals.
  • Trial and appeal of toxic tort cases involving various substances.
  • Lead member of team on Endangered Species Act listing litigation on Polar Bear listing and related cases and 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.
  • Mediator on complex civil litigation and IP cases.
  • Regularly handles matters for clients in the outdoor and archery industries.
  • Successfully litigated and prosecuted copyright infringement cases on behalf of authors and owners of three-dimensional artwork in the form of realistic depictions of animals used for taxidermy. Precedent setting case regarding the copyrightability of realistic depictions of animals, useful articles, conceptual separability and the merger doctrine, key tenets of copyright law. 
  • Conducted Markman Claims Construction hearing to narrow claim terms for fall-away arrow archery rest used with compound bows. Successfully moved for summary judgment dismissing the case upon the grounds of obviousness, anticipation, laches and indefiniteness. 
  • 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. 
  • Successfully argued against summary judgment in this patent infringement case involving design and utility patents for snow plows and material moving devices, setting up trial. 
  • Successfully moved to change venue from Western District of Wisconsin to Western District of New York.

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. District Court, Eastern District of New York
  • 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 District of New York
  • U.S. District Court, Southern District of New York
  • U.S. District Court, Western District 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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