A talented litigator and strategist, Michael Kane has earned a reputation for excellence in representing industry-leading companies in patent trials and appeals, post-grant proceedings, and U.S. International Trade Commission litigation. He is especially known for his skill in managing complex cases in multiple forums.
Repeatedly recognized as a leading intellectual property litigator, Mike uses his technical, business, and litigation skills to achieve the best possible results for his clients in adversarial proceedings. He focuses his practice on complex patent litigation and post-grant strategy, particularly in pharmaceutical matters, including Hatch-Waxman cases, biotechnology, and medical devices for high-profile clients such as MIT, Mayo Clinic, Alvotech, GSK, Sumitomo Dainippon Pharma, ResMed, and many others. Mike has appeared in 115+ petitions, successfully representing both petitioners and patent owners at the Patent Trial and Appeal Board in life sciences and medical device cases.
Among Mike’s strengths is his ability to deftly manage complex litigation for his clients involving foreign actions and matters in U.S. District Courts and the U.S. Court of Appeals. For example, he architected the strategy in a competitor dispute involving courtroom litigation in the U.S., Germany, the U.K., New Zealand, and Australia. The dispute also involved patent office challenges around the world, including multiple PTAB petitions in the U.S. After years of litigation, the client, working with Mike, resolved the dispute and achieved its business goals.
Widely recognized by his peers, Mike was named an “Attorney of the Year” by Minnesota Lawyer (2016) for his role in successfully representing Halo in Halo Electronics, Inc. v. Pulse Electronics, Inc. at the U.S. Supreme Court. Similarly, his team’s work in Coherus BioSciences v. AbbVie Biotechnology was designated an “Impact Case of the Year” by LMG Life Sciences in 2017. Mike was also named to “The Best Lawyers in America” list by The Best Lawyers in America (2022-2023).
Coherus BioSciences v. AbbVie Biotechnology, IPR 2016-00172 – Fish led the post-grant strategy that won three much-heralded IPRs for Coherus BioSciences invalidating three patents in the blockbuster drug Humira® patent family. These were the first-ever IPR decisions that invalidated patents for AbbVie’s biologic, which was the highest-selling drug in 2016 with $16 billion in global sales. At the time, Humira accounted for over 60% of AbbVie’s sales. The Coherus case was the most closely watched life sciences IPR of the year, not only because there was so much at stake for the parties, but because of the broader implications for the entire biosimilar industry. Fish’s work is now a model for how other biosimilar patents can be successfully attacked and challenged.
I-MAK, v. Gilead Sciences, IPR 2018-00120, -00119, -00103, -00122, -00121, -00125, -00126, 00123, -00211, -00390 – Gilead hired Fish to thwart an attack by Initiative for Medicines, Access & Knowledge Inc. (I-MAK), the billionaire-backed nonprofit that sought to invalidate at the PTAB Gilead’s patents covering its hepatitis C drugs Sovaldi, Harvoni and related sofosbuvir-based drugs. I-MAK filed 10 inter partes review (IPR) petitions at the PTAB against seven Gilead Orange Book patents, and the Fish team (along with co-counsel at WilmerHale) successfully obtained denial of all 10 petitions. The IPRs were coordinated with other proceedings as part of a larger dispute that involved multiple U.S. federal court cases, hearings at the Opposition Division of the European Patent Office, and trials in Norway, the UK, Canada, Germany, and Australia.
Pharmaceutical and biotechnology
Asserting leading pharmaceutical company’s patents relating to glaucoma treatment in Abbreviated New Drug Application (ANDA) litigation venued in the United States District Court for the District of Delaware. The case settled on very favorable terms on the eve of trial.
MIT and Repligen adv. ImClone – Asserting MIT’s patents relating to the use of mammalian cellular enhancers to increase protein expression in cell transformants against ImClone in a case pending in the United States District Court for the District of Massachusetts.
Alzheimer’s Institute of America v. Mayo Clinic, et al – Defending Mayo and Myriad in a licensing and patent dispute relating to AIA’s patent concerning cell lines incorporating the “Swedish Mutation,” a genetic mutation related to early onset Alzheimer’s Disease. The case is currently pending in the Central District of Florida. After securing arbitration over breach of contract claim, tried and obtained decision for defendants.
3M adv. Velander – Successfully defended 3M in an inventorship dispute with Dr. Velander a professor at Virginia Polytechnic Institute and State University. The technology at issue related to isolation and purification of proteins in fluids.
Kyphon adv. Medtronic – Defending Kyphon in a patent case brought by Medtronic asserting that Kyphon’s inflatable bone tamps infringe four balloon catheter patents. The case is pending in the Northern District of California.
Medtronic adv. C.R. Bard – Successfully defended Medtronic in a patent case brought by C.R. Bard in the United States District Court for the District of Delaware. The asserted patent related to arterial blood filters. Obtained a jury verdict of non-infringement for Medtronic.
Medtronic adv. Haemonetics – Successfully defended Medtronic in a patent case brought by Haemonetics in the United States District Court for the District of Massachusetts. The asserted patents related to autologous blood centrifuges. Successfully defeated Haemonetics motion for preliminary injunction and obtained summary judgment of non-infringement that was affirmed by the Federal Circuit Court of Appeals.
Medtronic adv. Charms – Obtained summary judgment that a patent asserted by Charms against the wave generating circuitry used in Medtronic’s implantable cardioverter defibrillators (ICDs) was invalid. Charms sued Medtronic for patent infringement in the United States District Court for the Western District of Texas. The judgment was affirmed by the Federal Circuit Court of Appeals.
Medtronic v. Moore – Defended Medtronic against Moore in a licensing and patent dispute brought by Moore in the United States District Court for the District of Minnesota. The technology at issue related to the circuitry used in Medtronic’s ICDs to detect accelerated heart rates. The case settled after the district court adopted Medtronic’s proposed patent claim construction following a Markman hearing.
Electrical and computers
HyperPhrase adv. Google – Defending Google in a suit brought by HyperPhrase for infringement of multiple patents relating to database searches. The suit is pending in the Western District of Wisconsin.
LeCroy adv. Tektronix – Defended LeCroy in a suit brought by Tektronix for infringement of multiple patents relating to the circuitry and software used in digital oscilloscopes. Tektronix filed the suit in the United States District Court for the District of Oregon. After the court granted LeCroy summary judgment of non-infringement on a Tektronix patent, the case settled.
Vivid Image Technology v. Bakery Crafts – Successfully defended Vivid Image and DecoPac in a patent infringement suit brought by Bakery Crafts relating to the use of a computer and ink jet printer to decorate bakery goods. The case was venued in the United States Bankruptcy Court for the Southern District of California. The bankruptcy court entered summary judgment of non-infringement for Vivid and DecoPac. The judgment was affirmed on appeal by the Federal Circuit Court of Appeals.
Micron adv. Motorola – Defended Micron in a 34 patent case brought by Motorola and Freescale Semiconductor in the United States District Court for the Western District of Texas. The patents at issue related to the circuitry and software used in cell phone communications. The case settled.
Trigem Computer adv. Compaq – Assumed defense of the defendants in a 13-patent case relating to numerous aspects of circuitry and software used in personal computers. The case was venued in the United States District Court for the Southern District of Texas. After mediation, the case settled on the eve of trial.
Sentinel Imaging adv. LaserMaster – Defended Sentinel Imaging in a patent and trade secret suit brought by LaserMaster in the United States District Court for the District of Minnesota. After a jury trial, judgment was entered for Sentinel Imaging on the patent issues and for LaserMaster on the trade secret issues. The case settled during the appeal process.
Bio-Cide adv. Alcide – Lead counsel defending Bio-Cide against in a patent infringement case brought by Alcide in the United States District Court for the Western District of Washington. The patent related to an oxy-chloro disinfectant used in the food processing industry. After mediation, the case settled.
3M and Dyneon adv. Ausimont – Asserted 3M’s patent against Ausimont in a suit filed in the United States District Court for the District of Minnesota. The patent related to omega-hydrofluoroalkyl ethers. Case settled.
Dyneon adv. Dupont Dow Elastomers and Asahi Glass – Asserted 3M’s patent against DDE and its supplier Asahi Glass in litigation in the United States District Court for the District of Minnesota and a counter-suit filed in the United States District Court for the District of Delaware. The patent related to fluorinated ethers. Case settled.
3M adv. Scanlan – Obtained a preliminary injunction against former employee for breach of employment agreement and misappropriation of trade secrets. The technology at issue related to the characterization and formulation of pressure sensitive adhesives. Case settled.
Buffets adv. Sargam – Lead counsel in suit asserting Buffets federally registered “Old Country Buffet” service mark against Sargam brought in the United States District Court for the District of Maryland. After filing a preliminary injunction motion, the court ordered Sargam to remove the infringing material. Case resolved through a Consent Judgment and Permanent Injunction.
St. Croix adv. American Premiere – Lead counsel for St. Croix in suit asserting the federally registered “Premiere” mark against American Premiere. The suit was brought in the United States District Court for the District of California. After mediation, American Premiere agreed to change its packaging and the case settled.
Trade secret/employee non-compete agreements
KLM Royal Dutch Airlines adv. American Airlines – Obtained summary judgment for KLM dismissing American’s trade secret misappropriation claims relating to computer algorithms used to forecast demand and set pricing.
3M adv. Hogan – Obtained summary judgment for 3M dismissing Dr. Hogan’s trade secret misappropriation claims relating to electronic dental anesthesia. The judgment was affirmed on appeal.
Other complex litigation
Northern States Power adv. Commissioner of Revenue – Obtained judgment for NSP that standby generating systems at nuclear power plants were tax-exempt resulting in multi-million dollar annual tax reduction.
Klein Bancorp adv. Commissioner of Revenue – Obtained $300 million tax refund of unconstitutionally collected taxes for group of banks. The judgment was affirmed on appeal.