On January 2, 2020, Patexia published its first annual “ITC Intelligence Report,” which includes rankings of attorneys handling patent litigation at the International Trade Commission. Mintz is recognized as among the top ten firms in ITC Section 337 litigation over the past 5 years. Many of our team members are individually recognized as among top performing complainant-side lawyers as well. We are pleased to be among the firms included in this publication and thrilled that it has come on the heels of a great year at the ITC for the Mintz team.
Among 2019 successes at the ITC are a determination that Jennewein infringed our client Glycosyn’s patents, and that SK hynix infringed our client Netlist’s standard-essential patent. We also concluded two semiconductor cases with favorable settlements on behalf of Globalfoundries and Innovative Foundry Technologies.
- Certain Human Milk Oligosaccharides and Methods of Producing the Same (337-TA-1120) Glycosyn is a long-time Mintz client and US biotech manufacturer producing ingredients critical to infant formula. Mintz filed a complaint at the ITC alleging infringement by global competitor Jennewein Biotechnologie GmbH. Following oral hearing, the administrative law judge issued a Notice of Initial Determination (ID) that Jennewein has infringed Glycosyn’s Patent 9,970,018 and that Jennewein failed to show that any claim of the ‘018 patent was invalid. A recommendation for a limited exclusion order be issued was included in the ID.
- Certain Memory Modules and Components Thereof (337-TA-1089) Mintz filed a complaint on behalf of Netlist alleging that SK hynix’s LRDIMM and RDIMM products infringed two of Netlist’s standard-essential patents (SEPs). The firm successfully demonstrated that the accused memory module products infringed one of the SEPs. As a result, in October 2019 the ALJ issued a Notice of Initial Determination finding that SK hynix’s sale, sale for importation, and importation into the US of accused memory modules violated Section 337.
- Certain Semiconductor Devices, Products Containing the Same, and Components Thereof (II) (337-TA-1177) Mintz represented GlobalFoundries, a $5.5 billion semiconductor foundry, as complainant against Taiwan Semiconductor Manufacturing, its largest direct competitor and the world’s largest semiconductor foundry. In late October 2019, a confidential settlement was reached between GlobalFoundries and Taiwan Semiconductor.
- Semiconductor Devices, Integrated Circuits, and Consumer Products Containing the Same (337-TA-1149) As part of an integrated multinational licensing and enforcement strategy, Mintz simultaneously filed a complaint with the ITC and in federal district courts on behalf of Innovative Foundry Technologies against global semiconductor manufacturers. The firm also coordinated filings with global partner firms in Germany and China as well. The ITC investigation was instituted in March of 2019 and resolved favorably prior to completion of fact discovery, with the ITC officially ending the investigation in October 2019.
We look forward to another successful year in 2020, as we work alongside our clients to ensure their patent rights are secure from infringement by international competitors.