• George Mason University (J.D., 1986)
  • George Washington University (M.S., Electrical Engineering, 1982)
  • Virginia Tech (B.S., Electrical Engineering, 1978)

Michael R. Fleming is Of Counsel to Irell & Manella LLP. Mr. Fleming is the former Chief Administrative Patent Judge of the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). 

Since leaving the bench, Mr. Fleming has provided strategic advice and counsel to companies and universities in complex patent proceedings and has represented parties at the USPTO. He has handled or advised on matters involving all areas of post-grant proceedings, appeals and USPTO practices, with a primary focus on the new post-grant proceedings that were established by the America Invents Act (AIA). Additionally, Mr. Fleming has extensive experience advising clients in all areas of strategic patent prosecution and management. With his background in the USPTO, his expertise extends to a wide range of technologies, including electrical, mechanical, chemical and life sciences fields. As a result of his work both on and off the bench, The National Law Journal named Mr. Fleming among the 2016 Intellectual Property Trailblazers.

Mr. Fleming's six-year tenure as Chief Judge capped more than 30 years with the USPTO, including 17 years as an Administrative Patent Judge and four years as a Supervisory Patent Examiner. While Chief Judge, he assisted Congress in drafting the post-grant provisions of the AIA. Mr. Fleming actively participated in establishing many of the present patent procedures and policies of the USPTO, including many of the PTO examination guidelines and the federal rules for Patent Office examination. He was awarded the Department of Commerce's prestigious Gold Medal for his work on the official examination guidelines for subject matter eligibility, which are critical to prosecuting high-tech patents. 

Mr. Fleming was also responsible for many of the precedential opinions that are presently binding on Administrative Patent Judges of the PTAB. Moreover, he was responsible for establishing PTAB policy, internal procedures, rules and precedential and informal opinions. This work included instituting the official standard operating procedure for issuing precedential opinions that establish binding precedent on issues before the Board and which aid in developing best examination practices. 

From the beginning of his career as a Patent Examiner, and later as a Supervisory Patent Examiner, Mr. Fleming handled complex electrical and computer-related patents. Later, as Patent Judge, he decided cases in a wide range of technologies, including many in the electrical, mechanical, chemical and life sciences fields. 

In addition to his practice, Mr. Fleming serves on the National Advisory Council for George Washington University's School of Engineering and Applied Science, a recognized leader in innovation and collaborative engineering research. He is also a frequent speaker and publisher on patent law topics.

Representative Cases

PTAB Post-grant Proceedings

  • IPR2016-00744 Lead Counsel for Patent Owner
  • IPR 2016-00863 Back-up Counsel for Petitioner
  • IPR 2016-00865 Back-up Counsel for Petitioner
  • IPR 2016-00866 Back-up Counsel for Petitioner
  • IPR2016-00466 Lead Counsel for Petitioner
  • IPR2016-00468 Lead Counsel for Petitioner
  • IPR2016-00469 Lead Counsel for Petitioner
  • IPR2016-00470 Lead Counsel for Petitioner
  • IPR2015-01719 Back-up Counsel for Patent Owner
  • IPR2015-01768 Lead Counsel for Petitioner 
  • IPR2015-01767 Lead Counsel for Petitioner 
  • IPR2015-01766 Lead Counsel for Petitioner 
  • IPR2015-01764 Lead Counsel for Petitioner 
  • IPR2015-01759 Lead Counsel for Petitioner 
  • IPR2015-00944 Lead Counsel for Patent Owner
  • IPR2015-00943 Lead Counsel for Patent Owner
  • IPR2015-00626  Lead Counsel for Patent Owner 
  • IPR2015-00615  Lead Counsel for Patent Owner 
  • IPR2015-00594  Lead Counsel for Patent Owner 
  • IPR2015-00593  Lead Counsel for Patent Owner 
  • IPR2015-00592  Lead Counsel for Patent Owner 
  • IPR2015-00591  Lead Counsel for Patent Owner 
  • IPR2015-00370 Counsel for Patent Owner 
  • IPR2015-00371 Counsel for Patent Owner 
  • IPR2015-00372 Counsel for Patent Owner 
  • IPR2015-00374 Counsel for Patent Owner 
  • IPR2015-00375 Counsel for Patent Owner 
  • IPR2015-00269 Counsel for Petitioner
  • IPR2014-00728 Lead Counsel for Patent Owner
  • IPR2014-00809 Lead Counsel for Patent Owner
  • IPR2014-00881 Lead Counsel for Patent Owner
  • IPR2014-00206 Counsel for Patent Owner 
  • IPR2014-00207 Counsel for Patent Owner 
  • IPR2014-00208 Counsel for Patent Owner 
  • IPR2014-00450 Counsel for Patent Owner 
  • IPR2014-00452 Counsel for Patent Owner 
  • IPR2014-01142 Back-up Counsel for Patent Owner 
  • IPR2014-01143 Counsel for Patent Owner 
  • IPR2014-01144 Counsel for Patent Owner 
  • IPR2014-00871 Counsel for Patent Owner 
  • IPR2014-01220 Counsel for Patent Owner 
  • IPR2014-00914 Counsel for Patent Owner 
  • IPR2014-01179 Counsel for Patent Owner 
  • IPR2014-01180 Counsel for Patent Owner 
  • IPR2014-00911 Counsel for Patent Owner
  • IPR2013-00438 Counsel for Patent Owner
  • IPR2013-00448 Counsel for Patent Owner
  • IPR2013-00450 Counsel for Patent Owner
  • IPR2013-00505 Counsel for Patent Owner
  • IPR2013-00509 Counsel for Patent Owner
  • IPR2013-00510 Counsel for Patent Owner
  • IPR2013-00041 Consultant for Petitioner

Representative Publications and Presentations

  • Moderator, "Recent Developments at the USPTO and PTAB," LAIPLA Fall Patent Dinner (October 4, 2018)
  • Co-author, "5 Game Changers In USPTO’s New Trial Guide," Law360 (August 2018)
  • Co-author, "How Fed. Circ. Nike Ruling May Change Inter Partes Review," Law360 (August 2018)
  • Panelist, "Off the Record: Perspective on the Current State of Affairs and Recent Rulings from Former PTAB Judges," American Conference Institute’s 4th Annual Post-Grant PTO Proceedings Practical Strategies and Insights on IPR, PGR, and CBM Review (July 2018)
  • Co-author, “Patent Owners Face Increased Fraud Liability Risk,“ Corporate Counsel (March 2017)
  • Author, “Two Views of PTAB: Past, Present, and Future,” Landslide (January/February 2017)
  • Author, “Limitations on Standing in IPRs,” Westlaw Journal Intellectual Property (May 2016)
  • Panelist, “The Role of the PTAB in District Court Patent Litigation,” LAIPLA’s Spring Patent Luncheon (April 2016)
  • Co-author, “Indefiniteness In Inter Partes Review Proceedings,“ Journal of the Patent & Trademark Office Society Vol. 98, No 1 (March 2016)
  • Panelist, “Patent Trial and Appeal Board: Trends and Predictions, Challenges and Opportunities,“ D.C. Bar IP Law Section Patent Committee Lunch (February 2016)
  • Panelist, “Improving The Efficiency of Handling Patent Litigation,“ The Sedona Conference 15th Annual Patent Litigation Conference (October 2015)
  • Panelist, “Retrospective Review: Post Issuance PTO Proceedings,” The George Washington University Law School Symposium on Intellectual Property (May 2015) 

USPTO Examination Policy Activities

  • The USPTO National Report for Trilateral Harmonization Project 12.5 – Patentability of Computer-Related Inventions, October 20, 1988.
  • USPTO reclassification of the computer technology art held in only two subclasses in Class 364 containing over 10,000 U.S. Patents into searchable and useful classification scheme.
  • Examination Guidelines for Computer-Related Inventions, March 1996.
  • Examiner Training Materials for implementing the Examiner Guidelines for Computer-Related Inventions, March 1996.
  • Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos, June 2010.
  • Supplementary Examination Guidelines for Determining Compliance with 25 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, December 2010.

United States Patent Trial & Appeal Board Policy Activities

  • Rules of Practice Before the Board of Appeals and Interference in Ex Parte Appeals, December 2010.
  • Patent Trial & Appeal Board Standard Operating Procedure 1 (Revision 13) Assignment of judges to merits panels, motion panels, and expanded panels, February 12, 2009.
  • Patent Trial & Appeal Board Standard Operating Procedure 2 (Revision 7) Publication of Opinions and Binding Precedent, March 23, 2008.

United States Patent Trial & Appeal Board Precedential Opinions

  • Ex parte Moncla, Appeal 2009-006448 (BPAI June 22, 2010) – Provisional non-statutory double patenting.
  • Ex parte Quist, Appeal 2008-001183 (BPAI June 2, 2010) – Standard of review of appellant’s rebuttal evidence.
  • Ex parte Frye, Appeal 2009-006013 (BPAI February 26, 2010) – Standard of review for examiner error based upon issues identified.
  • Ex parte Tanaka, Appeal 2009-000234 (BPAI December 9, 2009) – Requirement of reissue error under 35 U.S.C. § 251.
  • Ex parte Gutta, Appeal 2008-4366 (BPAI August 10, 2009) – Patent-eligible subject matter under 35 U.S.C. § 101. 
  • Ex parte Rodriguez, Appeal 2008-000693 (BPAI October 1, 2009) – Means plus function 35 U.S.C. § 112, sixth paragraph, elements in a claim must have corresponding structure described in the specification to meet the requirements of 35 U.S.C. § 112, second paragraph, and if where 35 U.S.C. § 112, sixth paragraph, do not apply to the function elements, then the elements do not meet the scope of enablement requirement of 35 U.S.C. § 112, first paragraph.
  • Ex parte Catlin, Appeal 2007-3072 (BPAI February 3, 2009) – Requirements of sufficient definite claim scope under 35 U.S.C. § 112, second paragraph.
  • Ex parte Jella, Appeal 2008-1619 (BPAI November 3, 2008) – Obviousness in view of  KSR Int’l Co. v Teleflex Inc., 127 S. Ct. 1727 (2007).
  • Ex parte Miyazaki, Appeal 2007-3300 (BPAI November 19, 2008) – Standard of review for indefiniteness at the USPTO under 35 U.S.C. § 112, second paragraph, is not insolvable ambiguous, but sufficient definiteness to give notice to the public.
  • Ex parte Yamaguchi, Appeal 2007-4412 (BPAI August 29, 2008) – Qualification of prior art.
  • Ex parte Whalen II, Appeal 2007-4423 (BPAI July 23, 2008) – Obviousness in view of  KSR Int’l Co. v Teleflex Inc., 127 S. Ct. 1727 (2007).
  • Ex parte Ghuman, Appeal 2008-1175 (BPAI May 1, 2008) – Jurisdiction.
  • Ex parte Fu, Appeal 2008-0601 (BPAI March 31, 2008) – Obviousness of a species in a genus.
  • Ex parte Letts, Appeal 2007-1392 (BPAI January 31, 2008) – Conditional cancellation of a claim on appeal.
  • Ex parte Nehls, Appeal 2007-1823 (BPAI January 28, 2008) – Utility under 35 U.S.C. § 101 and 35 U.S.C. § 112, first paragraph, for sense or antisense sequence numbers for gene expression.
  • Ex parte Catan, Appeal 2007-0820 (BPAI July 3, 2007) – Obviousness in view of  KSR Int’l Co. v Teleflex Inc., 127 S. Ct. 1727 (2007).
  • Ex parte Kubin, Appeal 2007-0819 (BPAI May 31, 2007) – Obviousness and written description requirements for nucleic acid sequence.
  • Ex parte Smith, Appeal 2007-1925 (BPAI June 25, 2007) – Anticipation and Obviousness
  • Ex parte Eggert, Appeal 2001-0790 (BPAI May 29, 2003) – Recapture under 35 U.S.C. § 251.
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Bar & Court Admissions

  • Virginia
  • U.S. Patent and Trademark Office
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Supreme Court
  • Not admitted to the State Bar to practice law in California