Intellectual Property

Protecting and leveraging your intellectual assets is vital to staying competitive and investing confidently in developing new products and services. Mintz Levin’s full-service Intellectual Property Practice can help you optimize your IP resources, whether you are an established company seeking an array of patent and trademark protections, an emerging company seeking to secure strategic business rights, or the owner of a portfolio seeking to harvest the value of dormant patent assets.

We work with clients both domestically in the US and Europe, and internationally, to provide comprehensive, practical advice to a wide range of emerging and established technology-based businesses. Our Intellectual Property attorneys and Technology Specialists work closely with our business lawyers and are committed to providing clients with dedicated service and the best advice. We have bench strength across the country and in Europe in a very broad range of technologies and in all areas of IP representation — patent prosecution and litigation, trade secrets litigation, trademark registration and litigation, copyright issues, domain disputes, and more.

Quick Facts


  • Team comprises 85+ attorneys and technology specialists, including:
    • 13 PhDs (2 electrical engineering, 1 civil engineering, 10 life sciences)
    • 34 engineers (electrical, mechanical, computer), half of whom have advanced degrees
  • Fully integrated IP practice of attorneys, technology specialists, and professionals
  • Routinely represent clients before the following:
    • US Patent and Trademark Office
    • US Copyright Office
    • UK Intellectual Property Office
    • European Patent Office
    • Federal and state courts
    • International Trade Commission
    • Regulatory and administrative agencies

  • Reputation as the go-to firm for high-stakes IP litigation sealed by numerous significant litigation victories
  • Experienced in complex patent prosecution, including reissues, reexaminations, interferences, oppositions, protests, and patent appeals
  • Consistent international patent advisory methodology
  • Recognized for excellence by the American College of Trial Lawyers, and by Chambers USA, Benchmark Litigation, and Super Lawyers

Areas of Focus

  • Alternative dispute resolution
  • Due diligence for business transactions
  • Enterprise-wide IP programs
  • Guidance to avoid infringing on the IP rights of others
  • IP assessment and valuation
  • IP audits
  • IP protection strategies
  • Licensing and technology transfer
  • Opinion work
  • Patent and trademark oppositions and appeals
  • Patent and trademark prosecution
  • Patent litigation

Rankings & Recognitions

  • U.S. News & World Report and Best Lawyers “Best Law Firms”: Practice top-tier ranked nationally for Biotechnology Law (2011 – 2014)
  • Recognized for excellence by American College of Trial Lawyers, Chambers USA, Benchmark Litigation, and Super Lawyers
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Gary Au

Gary Au

Technology Specialist

Life Sciences

  • Serve as lead outside patent counsel to a biotech company that is focused on discovery and development of small molecule histone methyltransferase (HMT) inhibitors, a new class of targeted therapeutics based on breakthroughs in the field of epigenetics. Assisted collaboration with another company to discover, develop, and commercialize therapeutics for the treatment of lymphoma and other cancers in genetically defined patients. The work involved extensive patent due diligence on intellectual property and involved working with inside and outside patent and corporate counsel to finalize the transaction.
  • Serve as lead patent counsel handling the patent prosecution, patent advisory, and IP due diligence for a biotech company for the treatment of infectious and other serious diseases.
  • Serve as lead patent counsel for a biotech company in managing in-licensed patent applications and preparing and prosecuting numerous patent applications that cover Toll-like receptor agonists, which are currently undergoing clinical trials for treatment of various disorders including cancer, respiratory and autoimmune diseases, and inflammatory disorders.
  • Assumed responsibility as lead patent counsel handling the patent prosecution, patent advisory, and IP due diligence for a biotech company to prosecute numerous patent applications claiming anti-infectives. Manage in-licensed portfolio relating to clinical stage antiviral therapeutics. Provided strategic review of patent portfolio in connection with a $45 million round of financing and partnering activities.
  • Served as lead patent counsel for a biotech company in drafting and prosecuting patent applications that cover antibody drug conjugates with a Fleximer scaffold.
  • Served as lead patent counsel for a global pharmaceutical company in prosecuting to issuance numerous patents that cover emulsion PCR. Lead counsel in opposition proceedings in the EPO and in re-examination proceedings in the USPTO as well as counsel in interference proceedings in the USPTO.
  • Served as lead patent counsel for a pharmaceutical company in prosecuting to issuance numerous patents that cover uroguanylin-derived peptide therapeutics useful for the treatment of gastrointestinal disorders. Lead counsel in opposition proceedings in the EPO and in re-examination proceedings in the USPTO.
  • Serve as lead patent counsel for company that specializes in the development of anti-infective drugs.
  • Working with a client to develop a strong patent portfolio for cutting-edge wireless life science technologies focused on injectable medications.
  • Represent a Germany-based global manufacturing company with its IP portfolio development across multiple units in technologies varying from medical devices, such as patient monitors and physiological sensors, to mine and firefighting safety and training technologies.

Technology

  • Served as lead patent counsel and built a significant portfolio in relation to advanced laser-based gas sensing technologies in the petrochemical industries, including a pioneering patent for the detection of moisture in natural gas pipelines (which covers the company’s biggest selling product). It was largely based on the strength of the portfolio that the company was acquired by a large German / Swiss conglomerate. We represented the company with regard to the entire transaction with a significant IP diligence component.
  • Assist a global technology company with the development of a significant portion of its IP portfolio (approaching 1,000 patent families) working with in-house counsel and innovators across the globe. We are the go-to team when it is launching new platforms.
  • Sole outside patent counsel to a leading company in credit scores, credit card fraud detection, and various technologies relating to Big Data. We have obtained some fundamental scoring patents in various financial and insurance industries.
  • Patent, litigation, and licensing counsel to a pioneer in the field of international medical travel, assisting it with a patented system and algorithms.
  • Serve as primary outside counsel handling the patent prosecution, infringement assessment, and trademark proprietary technology for a high-technology printing press manufacturer, based in Israel, which enables Variable Data Enhancing (VDE) with an embossing effect that gives dimensionality and texture to images and words.
  • Serve as primary outside counsel handling the patent prosecution needs of a provider of cost-effective and scalable disk backup solutions.

Action Sports

  • We serve as intellectual property counsel protection for a company on its novel wave generation technology and unique wave pools, which will make perfect, continuous barrelling surfing waves. We also manage trademark registration for the brand.
  • Prepared and filed patent application on a new skateboard truck that includes vibration-dampening elements integrated within the hangar and axel of the truck.

IP Litigation

  • Certain Consumer Electronics with Display and Processing Capabilities (337-TA-884) – Represent investors in the patent portfolio of the former Silicon Graphics as complainant in the International Trade Commission. Investigation was instituted in June 2013 and among the respondent entities are Panasonic, Toshiba, Vizio, and ZTE. Most respondents settled. The ITC hearing was held over several days in May 2014, and on August 29, Mintz Levin successfully obtained a recommendation for a Limited Exclusion Order against the remaining respondent. Commission review of the Administrative Law Judge’s ruling remains pending.
  • Virnetx v. Mitel Networks Corp., et al. (E.D. Tex. - 6:11cv18) – Defended our client, the US division of a Germany-based global manufacturing concern, in a patent infringement action relating to secure network communications. Filed in January 2011, favorable settlement was achieved for our client in February 2013. Virnetx had previously scored a $368 million verdict against Apple and a $105 million verdict against Microsoft (Microsoft later settled with Virnetx for $200 million).
  • Certain LED Photographic Lighting Devices and Components Thereof (337-TA-804) — Represented a California-based complainant (plaintiff) and its UK parent, companies that make LED lighting systems for use in film and TV production, at the International Trade Commission. The ITC handed down its Final Initial Determination of infringement on September 7, 2012. On January 17, 2013, the ITC issued a General Exclusion Order (GEO) against respondents (defendants) based in both China and the United States. The result in this case is particularly notable because it is rare for the ITC to issue a GEO. It is much more common for complainants to seek and receive a Limited Exclusion Order from the court due to the rigorous criteria and careful balancing of interests that apply to requests for GEOs.
  • EON Corp. IP Holdings LLC v Skyguard LLC, et al. (E.D. Tex. - 6:11cv15) – Represented a defendant in this multi-patent infringement case relating to vending management communication modules. Filed in June 2011, case was settled very favorably after 18 months of litigation. EON, formerly known as TV Answers, Inc., holds more than three-dozen patents and has been fairly aggressive in its enforcement of a number of them. Among its targets have been some of the largest and most successful technology companies, including Apple, LG, Pantech, Honeywell, RIM, T-Mobile, and more. In some instances, EON has extracted high settlements from these organizations.
  • Alexander Orensthteyn v. Citrix (SD Fla - 0:02cv60478) – Won summary judgment of noninfringement and invalidity of patents asserted against a leading remote access provider. Also successfully defended these judgments on appeal to the Federal Circuit and convinced the District Court to enter sanctions against the patent owner and its counsel.
  • Ambato Media, LLC v. Clarion Co., Ltd, et al. (E.D. Tex. - 2:09cv242) – Represented Ambato asserting patents on methods of broadcasting location specific information for use in personal navigation and in dash navigation devices. Tried and won this case, which was settled after verdict and before appeal.

Clients We Serve

  • Biotechnology companies
  • Early-stage companies
  • Energy and clean tech companies
  • Engineering design
  • High technology companies
  • Hospitals
  • Life sciences companies
  • Manufacturers
  • Medical device companies
  • Microfluidics companies
  • Nanotechnology companies
  • Pharmaceuticals companies
  • Research centers
  • Software companies
  • Telecommunications companies
  • Universities

Past