Professional man in a suit and tie.

R. Michael Mori

Partner

Michael Mori is a seasoned attorney with both Big Law and Executive In House experience. Michael advises and counsels on complex technology and intellectual property transactions, and has negotiated and structured multi-million and multi-billion dollar cross border transactions. He also advises on class action litigation and strategy, and has overseen and managed, and resolved, antitrust regulator investigations and bet-your-company class action civil litigation on a global level. 

Before joining Prometheus Partners:

Michael has extensive experience in negotiating and drafting agreements for the development, licensing, production, supply and support of semiconductors, displays, and other hardware; software and data; and corporate sponsorship and content.

Michael has negotiated agreements for the protection and transfer of patents, copyrights, trademarks, trade secrets, and other intellectual property. In addition, Michael is experienced in structuring and negotiating acquisitions and asset sales, strategic alliances and partnerships, and joint ventures.

Michael has particular experience in the semiconductor and computer hardware and software area, and cutting-edge technologies, such as organic light emitting diode (OLED) and electrophoretic (EP) displays, super-sensitive GPS, and RFID. He has negotiated and drafted agreements for: the development and licensing of semiconductor process technology, display technologies, microelectromechanical devices, and industrial applications of ink jet printing technologies; the manufacturing, packaging and testing, distribution, sale and other commercialization of semiconductor and timing products; and the manufacturing, assembly, testing, distribution, and sale and other commercialization of display modules, handheld devices and other hardware. Michael has also provided advice with regard to, and has negotiated and drafted agreements for: acquisitions and asset sales of liquid crystal display, semiconductor, quartz device and other companies; joint ventures for the manufacturing of semiconductor products; strategic alliances and partnerships for the design, development, licensing, manufacturing, distribution and sale of MCUs for electrophoretic displays, OLED display manufacturing technology and related products, rear projection television systems, 3LCD projection systems, scanner defect correction technology and related products, radio wave control watches, and software; and strategic alliances and partnerships for the design and development of extended cavity surface emitting lasers, LEDs, and display (moisture impermeability) barrier technology.

As Lead Intellectual Property Licensing Counsel and Lead Commercial Counsel for an Accenture and Microsoft Joint Venture: Michael advised and counseled on technology and intellectual property transactions, including the provision of consulting, hosted, managed and cloud monitoring services; and negotiated and drafted related agreements. In addition, he advised on intellectual property licensing strategies and other intellectual property initiatives.

As Of Counsel in the Technology Transactions Practice of Paul Hastings: Michael advised and counseled on complex technology and intellectual property transactions, primarily in the high technology sector. He negotiated and drafted agreements for the development, licensing, production, supply and support of semiconductors, displays, and other hardware; software and data (including Software as a Service); and protection and transfer of patents, copyrights, trademarks, trade secrets, and other intellectual property.

Michael has represented:

  • A large global electronics company in the US$310 million acquisition of mobile handset connectivity and location development operations and certain patents, and licensing of connectivity and location technology.
  • A large global electronics company in the US$1.4 billion sale of its hard disk drive (HDD) business to a NASDAQ-listed manufacturer of HDD and storage solutions, and extending and enhancing the existing patent cross-license agreement between the companies.
  • A social media company in connection with the development, manufacture and supply of customized hardware for its open source server technology initiative under which the hardware acquisitions may exceed US$1 billion.
  • A leading Asian pharmaceutical and OTC company in its joint venture with another leading Asian pharmaceutical company to promote small molecule biosimilar pharmaceuticals.
  • A leading US medical research center and hospital in negotiating and drafting agreements for the licensing of patient data and medical coding software from, and the hosting of patient and medical coding data by, a leading software as a service vendor.
  • A leader in the pico projector field in the development and licensing of projector hardware and software, and the licensing of software test tools for manufacturing processes.

As Executive In House Counsel to a Major Electronics Company and its U.S.- and Japan-Based Subsidiaries: Michael was previously International General Counsel of Seiko Epson Corporation, Chief Intellectual Property Licensing Counsel of the Seiko Epson Group, General Litigation Counsel of Epson Imaging Devices Corporation, and General Counsel of Epson Electronics America, Inc. At the Seiko Epson Group companies, he advised executive management and the board of directors on a broad range of technology- and commercial-related transactions, including strategic alliances, partnerships, and joint ventures, as well as on criminal and civil antitrust and other regulatory matters.

  • As General Counsel for Epson Electronics America: Michael advised on and negotiated major domestic and cross-border transactions. He advised executive management and the board of directors on legal matters, and was responsible for corporate governance matters. He also established and maintained antitrust and export laws compliance programs.
  • As General Litigation Counsel for Epson Imaging Devices Corporation: Michael oversaw, and developed defensive and resolution and disposition strategies for, regulator investigations and class action and direct action litigation. He advised executive management and the board of directors on resolution and/or disposition of global antitrust regulator investigations and class action and direct action litigation.
  • As International General Counsel and Chief Intellectual Property Licensing Counsel for Seiko Epson Corporation: Michael managed the international transactions legal group and advised on, and structured and negotiated major international technology and commercial transactions (including strategic alliances, joint ventures and mergers and acquisitions). He also advised the executive management and board of directors on legal matters, and business strategy and initiatives. Michael also negotiated, drafted, reviewed and revised complex and sophisticated agreements (including patent cross license agreements, and in-bound and out-bound hardware and software license agreements) and documents.

Some technology matters which Michael has negotiated and advised on are:

  • A multi-million dollar licensing, joint development, manufacturing and joint commercialization deal with Infineon for a new generation “system on a chip” for mobile phones, where bands of cellular RF, WiFi, Bluetooth, and GPS were integrated into a single die.
  • A multi-billion dollar semiconductor manufacturing joint venture with IBM.
  • A multi-million dollar cross-license agreement opposite a major global semiconductor company.
  • A multi-million dollar assignment of superscalar patents to a prominent microprocessor technology company.
  • A multi-million dollar strategic alliance with a European technology company involving development and technology transfer and licensing rights for semiconductor wafer cutting technologies.
  • Multiple multi-million dollar semiconductor manufacturing process yield improvement agreements opposite a leading company in the field.
  • A multi-million dollar sale of a contact lens business to a prominent North American company, including the transfer of import licenses under the Pharmaceutical Affairs Law of Japan and the licensing of trademarks.
  • Agreements opposite a Taiwanese company in connection with the supply of component parts for, and manufacture and assembly of, rear projection televisions.
  • Agreements for semiconductor product design and development, semiconductor wafer supply, and semiconductor technology licensing.
  • Agreements for intelligent device management software development and licensing for next generation products.
  • Strategic supply agreements opposite major global mobile phone manufacturers involving annual liquid crystal display sales in the billions of dollars.
  • A multi-million dollar development and licensing of print and film defect detection and correction technologies for scanners and multiple function products.
  • Metal injection molding technology transfer and patent licensing for orthodontic applications.
  • Strategic alliance for, and cross licensing of, ink jet technologies for OLED display manufacturing.
  • Corporate sponsorship matters, such as the official time keeper sponsorship for the 2002 Winter Olympic Games (Salt Lake City), and sponsorship and advertising with respect to International Association of Athletics Federations (IAAF) events and Federation Internationale de Football Association (FIFA) events.

Education

Michael received his J.D. from Loyola Law School (Los Angeles) in 1992, where he was the recipient of a full scholarship. He earned his B.A. from the University California at Los Angeles (UCLA) in 1988, graduating in the top 1% with Phi Beta Kappa, Golden Key National Honor Society, College of Letters and Science Honors and Dean’s List inductions. 

Languages

Fluent in Spanish and French (Institut Méditerranéen d’Etudes Françaises, Montpellier, France; Certificat de Stage, Niveau Supérieur – Aug 1986), and in Japanese.

Activities

  • Presenter and Panelist, “The Globalization of Class Actions” (ACC Annual Meeting, San Antonio, Texas), Oct 2010
  • Presenter and Panelist, “Maximizing Investment Opportunities and Strategic Partnerships in Asia” (The Financial Times and Paul Hastings: The Asian Century Forum, New York, New York), Mar 2011

Affiliations

  • Association of Corporate Counsel (ACC), 2001 – 2011
  • Licensing Executives Society (LES), 2011 – 2013

Michael is admitted to the California, New York and New Jersey Bars.