Federal District Court
- Preservation Wellness Technologies, LLC v. NextGen Healthcare Information Systems, LLC, 2:15-cv-01562 (EDTX) – U.S. Federal Circuit Judge William Bryson presided over the case, granting Mintz client NextGen’s motion to dismiss after oral argument in April 2017. Judge Bryson held that Preservation Wellness’ patent at issue covers nothing more than the basic concept of a medical records system, which he said is not patent-eligible under the U.S. Supreme Court’s Alice decision. Mintz represented NextGen on the appeal at the CAFC and the decision was upheld.
- Connectsoft, Inc. v. NEEO, Inc., 2:16-cv-00548 (ED TX) – Successfully represented the defendant in a patent infringement lawsuit before Judge Gilstrap relating to radio frequency technology. Resulted in a favorable settlement in 2017.
- Kowa Pharmaceuticals America et al v. Amneal Pharmaceuticals, LLC, and related cases - Represented plaintiffs Kowa Company, Ltd., Kowa Pharmaceuticals America, Inc. and Nissan Chemical Industries, Ltd. in litigation which involved compound, formulation, and polymorph patents directed toward quinoline-type mevalonolactones (or, pitavastatin calcium) relating to the drug product Livalo®. Several of the cases successfully resolved pre-trial, and after a 10-day trial plaintiffs prevailed on all issues in two court decisions against the remaining defendants, Amneal and Apotex. Mintz Levin represents Kowa and Nissan in the appeal filed by Amneal and Apotex in the Federal Circuit. The team also defeated institution of three inter partes reviews filed by generic manufacturer defendants in these cases.
- Horizon Pharma AG and Jagotec AG v. Watson Laboratories, Inc. - Florida, et al. (1:13cv5124, DNJ) - Co-counsel and represented Jagotec AG, a wholly owned subsidiary of Skyepharma, in this Hatch-Waxman/Paragraph IV litigation. The case was settled on favorable terms.
- TLIF, LLC v. Alphatec Holdings, Inc. (EDTX, 2:14cv00882) – Represented the defendant in a patent infringement lawsuit relating to intervertebral implants. Resulted in a favorable settlement for the client.
- MEI, Inc. v. JCM American Corp., et al (DNJ 1:09-cv-351) – Represented plaintiff in single patent litigation which settled favorably for our client one month prior to Final Pretrial conference after more than two years of litigation. Complaint was originally filed under 1:05cv3165 and litigated for nearly four years before needing to be refiled based on judicial determination that original plaintiff entity did not have standing.
- Mitsubishi Chemical Corp., et al. v. Barr Laboratories, Inc., et al. (SDNY, 1:07cv11614) – Successfully represented Mitsubishi Chemical and Mitsubishi Tanabe Pharma Corp. in a Hatch-Waxman/Paragraph IV litigation regarding formulation of a blood anticoagulant used to treat heparin-induced thrombocytopenia (HIT). The validity of the patent was upheld after a lengthy bench trial, in a 156-page decision. (718 F. Supp. 2d 382 (SDNY 2010))
- Takeda Chemical Industries Ltd. v. Mylan and Alphapharm; 417 F. Supp. 2d 341, (S.D.N.Y. 2006); aff'd, 492 F.3d 1350 (Fed. Cir. 2007); cert. denied. 552 U.S. 1295 (2008) - Post-KSR case interpreting Supreme Court approach to obviousness and upholding non-obviousness of important pharmaceutical advances.
International Trade Commission
- Certain Graphics Systems, Components Thereof, and Consumer Products Containing the Same (337-TA-1044) - Represented Advanced Micro Devices (AMD) as complainant in the ITC asserting patents covering graphics processing technology employed by smart devices such as televisions and handsets. Respondents include LG Electronics, VIZIO, MediaTek, and Sigma Designs, Inc. (SDI). Achieved settlement with LG prior to the conclusion of expert discovery. Following the evidentiary hearing, the presiding ALJ issued an initial determination finding a violation of Section 337 and recommending the imposition of an exclusion order against the remaining Respondents’ accused products. The ITC affirmed the ALJ’s finding of a violation on August 22, 2018. As a result, the Commission issued orders banning the importation of products made by VIZIO, MediaTek, and SDI and cease and desist orders against VIZIO and SDI.
- Certain Computing or Graphics Systems, Components Thereof, and Vehicles Containing Same (337-TA-984) - Represented owner of portfolio of graphics processing and microprocessor patents, Advanced Silicon Technologies, LLC, as Complainant in an ITC investigation adverse to a number of automotive manufacturers, and infotainment system and chip suppliers. Respondents include Honda, Toyota, BMW, Audi, Volkswagen, NVIDIA, Texas Instruments, Renesas, Harman International, and Fujitsu-Ten. The investigation instituted in January of 2016 and resolved favorably prior to the conclusion of expert discovery in August of 2016.
- Certain Communications or Computing Devices and Components Thereof (337-TA-925) - Represented owner of portfolio of communications and computing patents from former enterprise communications business unit of large multinational innovation company, Enterprise System Technologies, S.A.R.L. An ITC investigation was instituted in August 2014 as to respondent entities Apple, Samsung Electronics, LG Electronics and HTC Corporation. Google participated as an intervenor. The investigation resolved prior to evidentiary hearing in June of 2015.
- Certain Consumer Electronics with Display and Processing Capabilities (337-TA-884) - Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC. Investigation was instituted in June 2013 and among the respondent entities were Panasonic, Toshiba, Vizio, and ZTE. Most respondents settled. After an evidentiary hearing held over several days in May 2014, on August 29, 2014 Mintz successfully obtained a recommendation for a Limited Exclusion Order against the remaining respondent, which chose to settle while Commission review of the Administrative Law Judge’s Initial Determination was pending.
- Certain Consumer Electronics and Display Devices and Products Containing Same (337-TA-836) - Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC, and as plaintiff in multiple parallel District of Delaware cases. Cases were filed between late 2011 and early 2012, and all were resolved by the end of January 2013. The technology at issue relates to LCD panels, central processor units, graphics processing units, and other microprocessor technology. Successfully licensed all respondents, including some of the largest and most recognized names in the converged device space – Apple, LG, Research in Motion, Samsung, and Sony.
- Certain LED Photographic Lighting Devices and Components Thereof (337-TA-804) – Represented the complainant (plaintiff) that makes 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 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 due to the rigorous criteria and careful balancing of interests that apply to requests for GEOs.
For Kowa Pharmaceuticals and Nissan Chemical, Mintz sued nine generic drug makers that had filed Abbreviated New Drug Applications (ANDA) with the FDA. The court upheld the validity and infringement of all asserted claims in two patents for the cholesterol drug Livalo®.
Mintz helped patent prosecution client Glycosyn defend its exclusive patent rights against the company's largest competitor, a global company selling infringing ingredients used in baby formula.
Mintz represents Advanced Micro Devices in enforcing its patent rights related to novel architectures for GPU circuitry. The ITC handed down a decision that VIZIO, MediaTek and Sigma Designs violated Section 337 of the Tariff Act and recommended certain products be excluded from import to the US.
Mintz helped patent licensing company Advanced Silicon Technologies (AST) monetize 3D video graphics processing and intelligent memory control patents. Mintz asserted four patents for AST against manufacturers in the International Trade Commission (ITC), district court, and European venues.
Mintz helped Enterprise Systems Technologies monetize a portfolio of more than 500 patents focused on enterprise telephony developed by Siemens AG. Mintz attorneys enforced four of the patents against integrated device companies. EST settled with Apple, Samsung, LG, and Google on favorable terms.
Mintz secured dismissal of an EDTX patent infringement case against NextGen Healthcare Information Systems that targeted NextGen’s Patient Portal program. The appellate court affirmed that patents directed to longstanding methods of organizing human activity are patent-ineligible subject matter.
At the peak of toy-buying season, Mintz helped Spin Master Ltd. obtain a preliminary injunction preventing toy company E. Mishan & Sons, Inc. (Emson) from importing and selling Radical Racers toys in the US after Spin Master sued Emson for infringing patents covering its Zero Gravity® toys.