Strategic IP Monetization & Licensing
- Represented AMD in enforcing patents related to graphics processing technology employed by smart devices such as televisions and handsets. Asserted four patents against LG, Vizio, Mediatek and Sigma Designs in the ITC and parallel district court cases. LG settled. ITC issued limited exclusion orders and cease and desist letters against remaining Respondents in August 2018.
- Represented AST in monetizing patents with AMD pedigree relating to controller and GPU architecture used in the automotive infotainment systems. Asserted four patents against auto manufacturers and suppliers in parallel district court and ITC proceedings, resulting in all defendants/respondents settling prior to close of expert discovery in the ITC case.
- Represented EST in enforcing patents with a Siemens AG pedigree relating to operating systems, intelligent analog and digital circuit architecture, and mobile communication systems in consumer electronics. Utilized a parallel district court and ITC strategy which resulted in Apple, Samsung, LG and HTC settling after the close of expert discovery at the ITC and before trial.
- Represented GPH in a multi-phase ITC, district court and licensing program against some of the largest names in consumer electronics manufacturing, including Apple, Asus, Dell, HTC, LG, RIM, Samsung, and Toshiba. Patents were from the portfolios of Silicon Graphics and Cray Supercomputer, and covered GPU and microprocessor architecture, and LCD structure. All but one ITC target took a license after expert discovery and before the hearing. Toshiba remained, and the ITC case concluded with an initial determination finding valid and infringed claims.
- Provided strategic counseling to our private equity client, The Gores Group, in its acquisition and monetization of Powerwave's Portfolio from start to finish. Assessing the 1400 patent portfolio prior to Gores acquiring it from Powerwave. We then represented Gores in mining the portfolio, identifying and approaching targets and potential buyers, and conducting the negotiation with and sale to Intel.
- Represented our client, owner of patents with Mitsubishi and Crescent Moon pedigrees, in enforcing patents in the smart phone operating systems space. Developed and implemented parallel district court and ITC strategies, resulting in all targets settling prior to the close of fact discovery.
- Represented Flashpoint in enforcing patents with Apple pedigree in the smart phone and digital imaging space against smart phone manufacturers including RIM, HTC, and LG. Initial phase included parallel district court and ITC cases. All targets settled after the close of expert discovery in the ITC case.
- 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.
Case Study
Mintz was hired to acquire and monetize patents from GlobalFoundries. After deploying IP mining and asset identification techniques to identify and negotiate the acquisition of 120 world-class patents, Mintz created and drove a successful licensing revenue program.
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Mintz identified, licensed, and then sold a tranche of strategic patents for GlobalFoundries, the largest semiconductor foundry in the US.
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Mintz represented private equity company The Gores Group in assessing and acquiring 1,400 US and foreign patents related to telecommunications infrastructure technology from Powerwave Technologies, which was then in bankruptcy proceedings, and selling the portfolio to Intel Corporation.
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Mintz helped Advanced Silicon Technologies (AST) acquire circuit design patents from Advanced Micro Devices, identify potential infringers, and ultimately generate substantial licensing revenue through enforcement and licensing strategies targeted to each infringer.
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Mintz helped the Gores Group, a private equity firm, acquire and then monetize a wireless infrastructure portfolio from Powerwave Technologies, which was in bankruptcy. The sale closed less than 15 months after diligence began and returned substantial value for the client.
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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.
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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.
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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.