Federal District Court
- Nanoco Technologies, Ltd. v. Samsung Electronics Co., Ltd., et al., 2:20-cv-00038, (E.D. Tex.) - Represented British nanotechnology company Nanoco Technologies, Ltd., a world leader in the development and manufacture of cadmium-free quantum dots and other nanomaterials, in a patent infringement case involving the synthesis of quantum dots, and use of quantum dot film resins in electronic display devices. The Mintz team also represented Nanoco in corresponding IPR proceedings before the United States Patent and Trademark Office. The firm secured a $150 million settlement for the client, which put an end to all global litigation between Nanoco and Samsung.
- SRAM, LLC v. Princeton CarbonWorks Inc., 9:21-cv-80581 (S.D. Fla) - Obtained a significant and complete defense verdict for client Princeton CarbonWorks, Inc. in the U.S. District Court for the Southern District of Florida. Princeton CarbonWorks is a Connecticut-based bicycle wheel maker that was accused of infringing two patents by competitor and industry giant SRAM, LLC. This was a “bet-the-company” dispute for Princeton CarbonWorks that culminated in a two-week trial in Miami, Florida. At the conclusion of the trial, a nine-person jury reached a verdict of no infringement and no damages in favor of Princeton CarbonWorks.
- Acera Surgical, Inc. et al v. Nanofiber Solutions, LLC, et al (D. Del -1-20-cv-00980) - Mintz represented multiple defendants, including Nanofiber Solutions LLC, Renovoderm LLC and Atreon Orthopedics, LLC, against allegations of infringement of five U.S. patents related to wound closure innovations using nanofiber technology filed by Acera Surgical, Inc. The parties amicably settled in September 2023.
- SoClean, Inc. v. Sunset Healthcare Solutions, Inc., 1:21-cv-10131 and 1:20-cv-10351 (D. Mass) - Represent SoClean, Inc. in patent infringement cases filed against Sunset Healthcare Solutions, Inc. involving an automated continuous positive airway pressure (“CPAP”’) sanitizing device.
- Parus Holdings Inc. v. LG Electronics Inc. and LG Electronics U.S.A. Inc., 3:20-cv-05896 (N.D. Cal.); Parus Holdings Inc. v. LG Electronics Inc., et al., 6:19-cv-00432, -00433, -00438, -00437, -00454 (W.D. Tex.)- Represent plaintiff in a patent infringement case involving robust voice browser system and voice activated device controller.
- Horizon Medicines LLC v. Teva Pharmaceuticals USA, Inc., 2:20-cv-08188 (D. NJ) – Lead Counsel to Teva Pharmaceuticals USA, Inc., in ANDA litigation involving fixed-dose oral combination product.
- Netlist, Inc. v. SK hynix, Inc., et al. - 6:20-cv-00194, -00525 (W.D. Tex.) - Represent plaintiff Netlist, Inc. in asserting three patents essential to JEDEC DDR4 RDIMM and LRDIMM standards against the Korean-based memory company, SK hynix in the Western District of Texas. Trial is scheduled for October of 2021.
- Lighthouse Consulting Group, LLC v. Citizens Financial Group, Inc., 2:19-cv-00338, -00340 (E.D. Tex.) - Successfully defended Citizens against claims of patent infringement related to check image capture technology.
- Connectsoft, Inc. v. NEEO, Inc., 2:16-cv-00548 (E.D. Tex) – Successfully represented the defendant in a patent infringement lawsuit before Judge Gilstrap relating to radio frequency technology. Resulted in a favorable settlement in 2017.
- Preservation Wellness Technologies, LLC v. NextGen Healthcare Information Systems, LLC, 2:15-cv-01562 (E.D. Tex) – Successfully defended NextGen, obtaining dismissal of the complaint after oral argument. With U.S. Federal Circuit Judge William Bryson presiding over the case, the court held that the patent at issue was not patent-eligible under the U.S. Supreme Court’s Alice decision. Mintz also represented NextGen on appeal to the Federal Circuit and the decision was upheld.
- 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 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.
- TLIF, LLC v. Alphatec Holdings, Inc., 2:14cv00882 (E.D. Tex.) – Represented the defendant in a patent infringement lawsuit relating to intervertebral implants. Resulted in a favorable settlement for the client.
International Trade Commission
- Certain Semiconductor Devices, Mobile Devices Containing the Same, and Components Thereof (337-TA-1336) – Represented patent owner Daedalus Prime in ITC investigation involving four patents related to semiconductor manufacturing processes used to make FINFET transistors. The case against Samsung was dismissed following a confidential license and settlement agreement. TSMC settled just prior to trial.
- Certain Integrated Circuits, Mobile Devices Containing the Same, and Components Thereof (337-TA-1335) – Represented Daedalus Prime against Samsung Electronics and Qualcomm Corporation in ITC investigation involving four patents related to power management techniques in computer processors. The case against Samsung was dismissed following a confidential license and settlement agreement. Evidentiary hearing involving the remaining parties was held in August 2023 and ultimately settled before a final decision on the merits.
- Certain Graphics Systems, Components Thereof, and Digital Televisions Containing The Same (337-TA-1318) – Represented Advanced Micro Devices in enforcing four patents involving graphics processing unit (GPU) technology. Obtained Initial Determination finding TCL and Realtek to be in violation of Section 337 and recommending that the Commission issue remedial orders in the form of a limited exclusion order against both parties, and further with respect to TCL, a cease and desist order. The Commission issued a notice indicating that it would not review the ALJ’s finding of violation with respect to one of the asserted claims but would review the ALJ’s finding of violation with respect to another asserted claim.
- Certain Flocked Swabs, Products Containing Flocked Swabs, And Methods of Using Same (337-TA-1279) - Representing Copan Italia and Copan Industries as complainants in the International Trade Commission, asserting patent infringement claims against global competitors in a case involving the use of flocking technology (common in the textile industry) in the production of biological specimen collection swabs.
- Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (337-TA-1222) – Represented DivX, a video codec company headquartered in San Diego, in enforcing patents before the ITC in the District of Delaware. The asserted patents involve innovations relating to digital rights management and streaming media. LG and Samsung settled after the Markman order was issued, leaving TCL as the sole remaining respondent. Shortly after the seven day evidentiary hearing held in July 2021, one of the two principal suppliers of the accused streaming technology to TCL, namely Roku, stepped in and took a license to DivX’s portfolio, thus partially resolving DivX’s claims against TCL. Prior to the court issuing a decision on the merits, DivX and TCL entered into a bilateral settlement agreement resolving DivX’s remaining claims against TCl and bringing an end to all pending litigation.
- Certain Semiconductor Devices, Products Containing the Same, and Components Thereof (II) (337-TA-1177) - Represented GlobalFoundries at the International Trade Commission and in multiple Western District of Texas actions, involving the direct and indirect infringement of four patents related to semiconductor devices, integrated circuits, and products containing the same. Additional defendants in these actions included Apple, Broadcom, Cisco, nVidia, Arista, Asus, and Lenovo. Within 2.5 months of filing at the ITC, the cases settled on favorable terms.
- Certain Semiconductor Devices, Integrated Circuits, and Consumer Products Containing the Same (337-TA-1149) – Mintz represented Innovative Foundry Technologies as part of a global enforcement strategy to protect 5 asserted patents relating to semiconductor fabrication and packaging. Respondents for the ITC matter included Taiwan Semiconductor Manufacturing Company, Qualcomm Incorporated, MediaTek, and Vizio. Cases were simultaneously filed in U.S. District Court and internationally in Germany and China. The investigation was instituted in March of 2019 and resolved favorably prior to the conclusion of discovery in August of 2019.
- Certain Human Milk Oligosaccharides and Methods of Producing the Same (337-TA-1120) – Represented Glycosyn LLC as complainant before the ITC against respondent Jennewein Biotechnologies GmbH, a large global competitor. The complaint alleged unlawful and unauthorized importation and production and/or manufacture of 2'-fucosyllactose oligosaccharides that directly infringe one or more claims of Glycosyn's U.S. Patent No. 9,453,230. Following oral hearing in May 2019, the Administrative Law Judge issued an Initial Determination finding that Jennewein had infringed claims of Glycosyn’s patent and recommended that a limited exclusion order issue, including a certification provision with heightened requirement.
- 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.
Mintz achieved a global settlement of an electronic components company’s decade-long patent dispute with a competitor after winning a two-week jury trial in a New York federal court. Our client filed the winning case after the competitor sued it twice for infringement in California.
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.
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.
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 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.
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 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.