Michael J. Wise

Perkins Coie LLP

Los Angeles

Patent prosecution, litigation

Wise's practice focuses on patent portfolio management and complex contested patent matters in the life sciences industry.

Unlike other firms, Wise said he and fellow attorneys at Perkins Coie LLP practice the full breadth of patent law -- from filing patent applications and following the application to issuance to enforcing, defending and litigating patents.

"That's relatively unique," he said. "A lot of larger firms like to put people in one of two buckets, either litigating and enforcing, or filing patent applications and prosecuting them. We do both on a regular basis."

Wise leads a team assisting Fontem Ventures in prosecuting its worldwide electronic-cigarette patent assets. Fontem's portfolio consists of more than 300 active patents and patent applications.

In 2013, Fontem Ventures acquired patents obtained by Hon Lik, a Chinese pharmacist widely recognized as the inventor of the e-cigarette. Wise had previously helped Hon and his company Ruyan file patents in the United States.

"Those were core patents that we were able to get and enforce against a bunch of infringers in the vaping market," Wise said. "I brought a series of lawsuits against many U.S. distributors of electronic cigarettes and successfully concluded those lawsuits for the client."

Wise represented Fontem in consolidated patent litigation against R. J. Reynolds Vapor Co., asserting that the tobacco company infringed 15 of Fontem's e-cigarette patents.

He also defended against 26 inter partes review petitions, filed by Reynolds in response to the litigation, seeking to invalidate the patents. Fontem Holdings 1 B.V. et al. v. R.J. Reynolds Vapor Co., 16-CV01255 (M.D. N.C., filed Oct. 26, 2016).

The litigation was settled in late 2018. The Patent Trial and Appeal Board denied 18 of the IPR petitions outright, and five were jointly terminated by the parties. Two resulted in final decisions upholding all challenged claims, and one ended in a decision upholding several challenged claims. Fontem's high success rate in having the petitions denied is rare at the PTAB.

Wise is a longtime member of the Southern California Biomedical Council and currently serves as secretary of the board of directors. For the last eight years, he has sung lead vocals in the Perkins Coie rock band, Privileged Communications, which performs in the annual Law Rocks! Los Angeles charity event. The band has raised a total of more than $100,000 for City of Hope.

-- Jennifer Chung Klam