Overview
Michael Fuller (마이클 풀러) 변호사는 샌디에이고 지사 대표 파트너 변호사입니다. 풀러 변호사는Knobbe Martens의 최고 경영 관리 위원회 위원 그리고 생명공학 실무 그룹 의장을 맡고 있습니다. 풀러 변호사는 다양한 지식재산권 주제에 대해 미국을 포함한 전 세계 여러 국가에서 발표를 진행하고 있습니다. 또한, 지식 재산권 소유자 협회(Intellectual Property Owners Association, IPO)에서 다년간 활동하며 지식재산권 이슈에 대한 국내외적 토론에 적극적으로 참여하고 있습니다.
풀러 변호사는 2017~2020년 연속으로 샌디에이고 비즈니스 저널에서 선정한 가장 영향력 있는 비즈니스 리더로 선정되었습니다. 또한, 2015~2018년 연속으로 샌디에이고 슈퍼 변호사로 선정되었습니다. 특히, 2018년 Intellectual Asset Management(IAM) 잡지에서 발행한 Patent 1000 가이드에서 선정한 “세계 최고의 특허 변호사” 중 한 명으로 선정되었습니다.
풀러 변호사는 다양한 과학 기술 분야에서 전문적인 지식을 가지고 있으며, 분자 생물학 및 컴퓨터 공학과 관련한 특허에 대한 실사 (Due Diligence) 및 특허 사용계약 관련한 전문 특허 변호사입니다. 풀러 변호사는 고객들을 위하여 창의력과 독창적인 전략 수립하고, 이를 바탕으로, 고객들의 지식재산권을 보호하기 위하여 항상 전념하고 있습니다.
풀러 변호사는 다양한 과학 기술 분야에 풍부한 실전 경험이 있으며 특히 기계학습 및 인공지능 시스템 (Machine learning / Artificial Intelligence system), 생물정보학 (bioinformatics), 차세대 시퀀싱 및 의료 진단 시스템 및 소프트웨어를 포함한 복잡한 기술에 대해 정통합니다. 풀러 변호사는 고객과의 협력을 바탕으로 자율 주행, 리튬 이온 배터리, 의료 진단, 웹 시스템 및 서비스, DNA 시퀀싱, 유전자 증폭, 제약 단백질 및 치료 단일클론 항체와 같은 다양한 기술 분야에 특허 포트폴리오를 구축 및 관리 하고 있습니다. 이러한 포트폴리오 구축 및 관리 외에도 풀러 변호사는 당사자 간 검토(IPR) 및 당사자 간 특허 재심사를 포함하여PTAB 항소, 일방(Ex Parte) 특허 재심사, 확장 특허 재등록 출원, 특허 관련 환경 분석, 실사, 의견, 특허권 비침해 및 무효성분 석 등에서 고객들을 대리하고 있습니다. 풀러 변호사는 고객과의 협업을 위하여 항상 헌신하며 필수 과학 및 기술 지식을 가지고 회의에 참석함으로써 고객들의 모든 영역에서 실질적인 효율성을 제공할 수 있도록 노력합니다
풀러 변호사는 UCLA 대학원에서 죽상동맥경화증과 심장병에 대한 이해를 돕기 위해 콜레스테롤을 운반하는 아포지단백에 대한 소프트웨어 및 생물학적 분석을 연구하였습니다. 대학원을 졸업 후, 풀러 변호사는 개인용 컴퓨터 마더보드를 설계 및 제작하는 여러 첨단 기술 스타트업을 공동 창업했으며 다양한 비즈니스를 위한 맞춤형 소프트웨어와 서비스를 연구 및 개발 하였습니다.
Mike Fuller is a technology enthusiast and widely regarded for his expertise in obtaining, licensing, and managing due diligence on patents involving molecular biology and computer science. Mike is a consummate deal-maker, working regularly with his clients to negotiate agreements for the sale or license of valuable technologies. Sought after for his creativity and unique ability to obtain highly valuable IP, Mike is devoted to protecting his client’s innovations. Combined scientific and high-technology backgrounds give Mike a deep understanding of complex technologies, including machine learning/AI systems, bioinformatics, next generation sequencing and medical diagnostic systems and software. Collaborating with clients to develop strong, enforceable, IP portfolios in technologies as diverse as autonomous driving, lithium ion batteries, medical diagnostics, web systems and services, DNA sequencing, gene amplification, pharmaceutical proteins and therapeutic monoclonal antibodies is the hallmark of Mike’s practice. In addition to developing these and other highly valued IP portfolios, Mike represents his clients in high stakes contentious matters in front of the USPTO, including inter partes reviews (IPRs) and ex parte patent re-examinations. Dedication to meaningful client collaboration, while coming to the table with the requisite science and technology knowledge, allows Mike to offer tangible efficiencies in every area of his practice
He is managing partner of the Knobbe Martens office in San Diego and a member of the Executive Committee. He speaks internationally on a variety of intellectual property topics, and has been actively engaged in national debates over IP issues through his many years of service with the Intellectual Property Owners Association (IPO). He is also involved as a mentor and advocate for Southern California startups as a Board Member of the NuFund Venture Group (previously San Diego Tech Coast Angels).
Some accolades include recognition as one of the San Diego Business Journal’s most influential business leaders in San Diego from 2017 – 2020, a San Diego Super Lawyer for 2015-2018, and one of the “World’s Leading Patent Professionals” in the 2018 Patent 1000 guide by Intellectual Asset Management (IAM) magazine. A full list of Mike’s accomplishments can be found in the Awards & Honors section.
As a graduate student, Mike worked on software and biologic analyses of cholesterol-carrying apolipoproteins to advance the understanding of atherosclerosis and heart disease. Following graduate school he co-founded several high-technology startups that designed and fabricated personal computer motherboards, and created custom software and services for a variety of businesses.
Education
- University of San Diego School of Law (USD) (J.D., 1998)
- University of California - Los Angeles (UCLA) (M.S. Biology, 1986)
- University of California - Los Angeles (UCLA) (B.S. Biology, 1984)
Representative Matters
Illumina, Inc. v. The Trustees of Columbia University, Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797 (2019).
Represented Illumina in IPRs challenging patents relating to nucleotide analogues for sequencing-by-synthesis. Obtained final written decisions holding all challenged claims unpatentable.
Natera, Inc. v. Illumina, Inc., Case No. IPR2018-01317 (2019).
Defended Illumina against a petition for IPR regarding a patent for noninvasive prenatal testing. Obtained decision denying petition and rejecting all challenges raised against Illumina’s claims.
Complete Genomics, Inc. v. Illumina Cambridge Ltd., Case Nos. IPR2017-02172 and IPR2017-02174 (2018).
Defended Illumina against petitions for IPR regarding a patent directed to DNA sequencing-by-synthesis. Obtained decisions denying petitions and rejecting all challenges raised against Illumina’s claims.
Illumina, Inc. v. Cornell Research Foundation, Inc., Case IPR2016-00557 (2017).
Represented Illumina in an IPR proceeding challenging a patent relating to assays for DNA detection. Achieved favorable case-dispositive settlement for client after institution of the IPR.
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016).
Represented Illumina and obtained affirmance of IPR final written decision upholding the validity of all challenged claims from a patent directed to DNA sequencing-by-synthesis.
Ariosa Diagnostics, Inc. v. Illumina, Inc., Case IPR2014-01093 (2016).
Represented Illumina in an IPR proceeding defending a patent directed to noninvasive prenatal screening methods. Obtained final written decision upholding the validity of all challenged claims.
Roche Molecular Systems Inc. v. Illumina, Inc., Case IPR2015-01091 (2015).
Defended Illumina against a petition for IPR regarding a patent for noninvasive prenatal screening methods. Obtained decision denying petition and rejecting all challenges raised against Illumina’s claims.
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case IPR2013-00517 (2015).
Represented Illumina in an IPR proceeding defending a patent directed to DNA sequencing-by-synthesis. Obtained final written decision upholding the validity of all challenged claims.
Recognition
Awards & Honors
Mike has received multiple awards and has been honored in both national and international forums for his legal accomplishments:
- Recognized for outstanding work in patent law in the 2024 edition of the Intellectual Asset Management (IAM) “Patent 1000 Guide” for Prosecution and Transaction (2024)
- Named one of the “World’s Leading Patent Professionals” in the Patent 1000 guide for transactions (2018) and for both transactions and prosecution (2019-2023) by Intellectual Asset Management (IAM) magazine. In 2023, Mike was described as an “outstanding practitioner” who “enjoys a wonderfully holistic practice and delivers tremendous value, thanks to his refined portfolio building and transactional skills.” In 2018, Mike was recognized for “taking charge of [the firm’s] biotech section, doing deals with big pharmaceutical companies, and never losing his passion for the underlying technology in the closing stages of year-long negotiations”. He was also commended for being “exceptionally creative in overcoming roadblocks without handing away his clients’ advantages”.
- Recognized in The Legal 500 “United States” 2019 and 2015 as being an outstanding practitioner. In 2015, he was noted for overseeing a number of inter partes reviews and ex parte patent re-examinations.
- Named to the San Diego Business Journal’s (SDBJ) SD 500 list from 2017 – 2019 as one of the most “influential business leaders in San Diego”.
- Named a 2018, 2022, 2023-2024 “Life Science Star” for Patent Strategy & Management in the Legal Media Group’s (LMG) “LMG Life Sciences” Guide. Mike was recognized for providing outstanding work to his life sciences clients in the areas of portfolio management, due diligence, and licensing agreements. He was praised by a client for “knowing the field and [being] great at communicating”.
- Selected for inclusion in the 2015-2018 San Diego Super Lawyers lists where he was recognized for his work in intellectual property law.
- Recognized among the world’s leading practitioners of patent law in Who’s Who Legal’s 2016 edition of the international “Who’s Who Legal: Patents” list.
- Named to the Daily Journal‘s list of Top Intellectual Property Attorneys of 2014, where he was recognized among the Top 25 Portfolio Managers & Patent Prosecutors of Intellectual Property.
- Selected as a “Top Attorney” in 2010 by The San Diego Transcript in the area of Intellectual Property Transactional work. Top attorneys were selected based on a survey of peers in the legal community.
- Selected as one of America’s top 250 patent and licensing practitioners for 2010 by Intellectual Asset Management (IAM) in their IAM Licensing 250: The World’s Leading Patent and Technology Licensing Practitioners guide.
Affiliations
- American Bar Association
- Evonexus Startup Incubator – 2018 Board Member
- Intellectual Property Owners Association – Biotech and Pharmaceutical Issues Committee
- Licensing Executives Society
- Massachusetts Institute of Technology (MIT) Financial Forum
- San Diego CONNECT
- San Diego Intellectual Property Law Association
- Tech Coast Angels – 2018 Board Member
News & Insights
Articles
Editor and contributor, Knobbe Martens Biotechnology Blog
- Renewed Efforts in Congress for Pharmaceutical Patent Reform
- Allergan v. MSN Laboratories: Federal Circuit Places Limits on Obviousness-Type Double Patenting
- Branded Manufacturers Decline to Remove Patents From the Orange Book After Receiving Letters From the FTC
- FDA Issues Long-Overdue Regulations on Direct-To-Consumer Advertisements for Prescription Medications
- Analogous Art Must Be Compared to the Challenged Patent
- Federal Circuit Finds Patent for Dietary Supplements Invalid Under § 101 for Reciting Naturally Occurring Milk Components
- 23andMe Receives First FDA Authorization for Direct-to-Consumer Cancer Risk Genetic Test
- California’s Drug Price Transparency Bill
- Litigation Misconduct Helps Render a Patent Unenforceable
- Federal Circuit Finds That Fetal Diagnosis Claims Survive Written Description Attacks
- University of Minnesota Sues Gilead Sciences for Infringement of Hepatitis C Patents
Contributor, Knobbe Martens Section 101 Blog
- USPTO Revises Examination Procedure after Berkheimer
- The Role of Analogies in the Alice Analysis
- Multi-level Encryption Patent Survives § 101 Challenge in District Court
- Federal Circuit Finds Three Intellectual Venture’s Patents Invalid under the Mayo/Alice Framework
- U.S. Appeals Court Finds a Software Patent Valid Even Under the Supreme Court’s “Alice” Test
Trade Secrets Or Patents? Life Science Leader (May 2020)
Can we patent products found in nature? It’s complicated. An update on Australia’s Myriad decision…, JD Supra Legal Perspectives (October 2015)
Protecting Your Client’s Trade Secrets, Attorney Journal San Diego (December 2015)
The PTAB May be Taking a More Balanced Approach in Biotech and Pharmaceutical IPRs, Bloomberg BNA Pharmaceutical Law and Industry Report (March 2015)
Inter Partes Reviews: A Powerful New Weapon on the Pharmaceutical Litigation Battlefield, Daily Journal – Biotech Supplement (August 2014)
Speeches & Seminars
“The Intersection of Life Sciences and AI: Analyzing Life Sciences IP Diligence in the Age of Artificial Intelligence”. Presented at the 7th Annual Summit on Life Sciences IP Due Diligence, American Conference Institute, Boston MA (December 5, 2024).
“IP Protection for Complex AI-Related Innovations in Pharma and MedTech”. Presented at the Intellectual Property Owners Annual Meeting, Chicago, IL (September 23, 2024)
“Overview of AI technology in biotech/drug development”. Presented to the United States Patent and Trademark Office, Patent Examiner Technical Training Seminar, Washington DC (June 28, 2023)
“Protecting AI Innovations in Biotechnology”. Presented to the Biotech Customer Partnership Meeting, United States Patent and Trademark Office, Washington DC (March 28, 2023)
“Intellectual Property Strategies that Increase the Value of your Technology”. Presented at GTC 5th Oncology Partnering & Deal-making Conference, San Francisco, CA (November 9, 2016)
“Strategic Decision-making in Dual PTAB/District Court Patent Litigation and Other Special Considerations for Pharmaceutical Patentees”. Presented at the Biotechnology Innovation Organization (BIO) General Counsels Committee Conference, San Diego, CA (November 2, 2016)
“Panel Discussion on Section 101 Patent Eligibility for Biotechnology Inventions.” Presented at Intellectual Property Owners Association PTO Summit meeting, Washington, DC (March 15, 2016)
“Creative Intellectual Property Strategies: Enhancing the Value of Your Technology.” Presented at GTC 4th Oncology Partnering & Deal-making conference, San Francisco, CA (November 17, 2015)
“Strategies for Patenting at the Intersection of Biotech, Informatics & Healthcare.” Presented at CincyBio 2015, Cincinnati, OH (April 21, 2015)