LAWYER
Michael A. Fisher
Counsel | Philadelphia
Michael A. Fisher

Michael A. Fisher, Ph.D. draws on his extensive background in electrical engineering to represent medical device, electronics, computer, and semiconductor companies in complex patent and trade secret litigation matters. He also devotes part of his practice to patent licensing, patent counseling, and software copyright matters.

Prior to his legal career, Dr. Fisher worked as a research and development engineer in the areas of solid state electronics, equipment-control software, and microelectromechanical systems (MEMS). He is a named inventor on three U.S. patents, relating to a dental instrument, an infrared imager, and a flat-panel computer display (U.S. Pat. Nos. 10,201,398, 5,929,440, and 5,956,003).

  • Clearly Clean Prods., LLC, et al., v. Tekni-Plex, Inc., et al. (U.S. District Court, Eastern District of Pennsylvania). Defending Tekni-Plex in a patent, trade secret and trade dress case involving plastic tray technology used in products sold at Whole Foods, Trader Joe’s and other stores nationwide. Ongoing.
  • Tekni-Plex, Inc. v. Converter Mfg., LLC (U.S. Patent Trial and Appeal Board). Served as lead counsel for Petitioner in three Inter Partes Reviews (“IPRs”) before the Patent Trial and Appeal Board (“PTAB”), challenging validity of patents asserted in related U.S. district court litigation between Clearly Clean and Tekni-Plex (described above).  Obtained a finding by the PTAB that all 72 challenged patent claims were unpatentable.
  • Roku, Inc. v. IOENGINE, LLC (U.S. Patent Trial and Appeal Board).  Represented patent owner IOENGINE, LLC before PTAB in six IPRs involving patents relating to secure, portable storage and data processing devices. Secured denial of institution of all six IPRs.
  • IPCom GmbH & Co. KG v. AT&T Inc. et al. (U.S. District Court for the Eastern District of Texas). Represented IPCom in multiple patent infringement suits involving patents relating to 3G, 4G, and 5G telecommunications systems. Cases settled favorably.
  • Ericsson Inc. and Nokia of Am. Corp. v. IPCom GmbH & Co. KG (Patent Trial and Appeal Board). Represented patent owner IPCom in responding to three IPR petitions involving patents asserted in parallel district court case on 3G, 4G, and 5G telecommunications systems.  Secured denial of institution of IPRs.
  • J. Morita Mfg. Corp., v. Dental Imaging Techs. Corp. (U.S. District Court for the Eastern District of Pennsylvania). Defended Dental Imaging Technologies Corporation, a prominent manufacturer of dental imaging equipment, in five-patent lawsuit involving 3-D X-ray systems. Resolved case efficiently by reaching early settlement.
  • Dexcowin Global, Inc. v. Aribex, Inc. (U.S. District Court, Central District of California). Represented patentee in patent litigation involving handheld X-ray devices for dentistry. After winning summary judgment of infringement against the accused products, helped Aribex reach a favorable settlement.
  • Amkor Technology, Inc. v. Synaptics Inc., et al. (U.S. District Court, District of Delaware). Represented leading semiconductor packaging company in trade secret, copyright and patent litigation claiming over US$90 million in damages. Reached favorable settlement.
  • TGR Intellectual Props., LLC v. KaVo Dental Techs., LLC. (U.S. District Court, Northern District of Illinois). Represented defendant in patent litigation involving display mounting devices for dental offices. Reached favorable settlement.
  • Mondis Technology Ltd. v. LG Electronics, et. al. (U.S. District Court, Eastern District of Texas). Represented Mondis in an eight-patent case relating to computer monitor DDC/CI interfaces and Extended Display Identification Data (EDID) capabilities. Secured jury verdict for Mondis that the asserted patents were valid and infringed.
  • Synopsis, Inc. v. Magma Design Automation (U.S. District Court, District of Delaware). Represented plaintiff Synopsis in patent litigation involving electronic design automation (EDA) software for designing semiconductor chips. Reached favorable settlement.
  • In re: Katz Interactive Call Processing Patent Litigation (U.S. District Court, Central District of California). Represented defendant TD Banknorth in patent litigation involving systems and software for automatic processing of telephone calls. Reached favorable settlement.
  • Hitachi Consumer Elecs. Co., Ltd. v. Top Victory Elecs. (Taiwan) Co. Ltd., et al. (E.D. Tex.). Represent Hitachi in a fifteen-patent case involving digital television technology. Pending.
  • Technical Witts, Inc. v. Skynet Elec. Co., Ltd., et al. (U.S. Court of Appeals, Federal Circuit). Represented Technical Witts in a patent appeal involving switching power supply technology. Settled.
  • Represented a dental equipment company in license negotiations involving a variety of products used for dentistry.
  • Represented an electronics company in license negotiations involving consumer products.
  • Analyzed the patent portfolio of a client in the media technology industry.
  • Represented an electronics company in license negotiations involving computer memory.
  • Represented an investment company in negotiations involving battery charging technology.
  • Represented an electronics company in license negotiations involving network interface technology.

Includes matters handled at Dechert or prior to joining the firm.

  • Using Licenses to Settle Intellectual Property Lawsuits — LES Annual Meeting, New Orleans, LA (October 21, 2024)
  • Using Licenses to Settle Intellectual Property Lawsuits — LES Philadelphia Chapter, Philadelphia, PA (February 28, 2024)
  • Trademark Protection for New Product and App Launches in 2020- Q&A —LES Philadelphia Chapter, Philadelphia, PA (January 28, 2020)
  • Section 101: The Latest from the Courts and the USPTO —Dechert's Intellectual Property Seminar, Philadelphia, PA (December 3, 2019)
  • Patent Basics — Drexel University, Institute of Electrical and Electronics Engineers (November 21, 2017)

    Speaker, "Patent Basics" panel provided an overview of patent issues for engineers, including what rights a patent gives (and does not give) you, why you might want a patent, what kinds of inventions can be patented, how to get a patent, and how to figure out whether your invention is valuable enough to justify the expense of patenting it.

  • Patent Cases on the Move: SCOTUS Causes Seismic Shift in Venue —Dechert's Intellectual Property Seminar, Philadelphia, PA (November 1, 2017)
  • Practical Business and Legal Considerations for International Patent Protection — ACI's 6th Advanced Summit on Medical Device Patents, New York, NY (February 25, 2016)
  • The Life Cycle of a Patent Lawsuit — Stevens Institute of Technology, Hoboken, NJ (October 10, 2009)
  • So You Want to Be a Technology Entrepreneur? Create a Smart Patent Strategy for Your Company's Inventions — University of Rochester, Rochester, NY (April 26, 2007)
  • Careers in Patent Law — University of Rochester, Rochester, NY (April 25, 2007)
Services Industries
    • University of Rochester, B.S., Electrical engineering, 1987, with distinction
    • University of Rochester, M.S., Electrical engineering, 1989
    • University of Rochester, Ph.D., Electrical engineering, 1993
    • Columbia Law School, J.D., 2000, James Kent Scholar, Harlan Fiske Stone Scholar, Articles Editor of the Journal of Law & the Arts, recipient of the Carroll G. Harper Prize for achievement in IP studies and writing
    • New York
    • Pennsylvania
    • United States District Court for the Southern District of New York
    • United States District Court for the Eastern District of Pennsylvania
    • United States Court of Appeals for the Federal Circuit
    • United States Patent and Trademark Office
    • High Technology Sector of Licensing Executives Society
    • Advisory Board of the University of Rochester Electrical and Computer Engineering Department