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Brad M. Scheller

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[email protected]

+1.212.692.6761

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Brad is an experienced patent litigator and trial lawyer who represents clients in federal courts around the country, including US district courts and the US Court of Appeals for the Federal Circuit, before the Patent Trial and Appeal Board and at the International Trade Commission. He counsels clients in a variety of sectors, including high technology related to electronics, automotive technologies, medical technologies and various consumer products. With a background in mechanical engineering and over 15 years of experience, Brad has successfully represented patent owners’ rights against infringers, protected those rights from invalidity challenges and negotiated favorable settlements.

Brad has served as both lead and co-counsel in front of judges and juries at trial in U.S. district courts, the International Trade Commission and the Patent Trial and Appeal Board (PTAB) of the U.S. Patent Office, argued for clients at evidentiary hearings before Article III judges, deposed and defended numerous fact and expert witnesses, and successfully managed large and small litigation teams through all phases of discovery and pretrial. He has litigated intellectual property cases in District Courts throughout the United States, including the Eastern District of Texas, the Southern, Central and Northern Districts of California, the District of Delaware and the Southern and Eastern Districts of New York.

Brad’s litigation experience also extends to post-grant proceedings before the PTAB, where he has successfully defended patent owners’ rights against inter partes review (IPR) challenges and co-chairs the firm’s Post Grant practice. The Mintz post-grant team has achieved success rates for patent owners well above the industry average.

Brad is also the Editor of Mintz’ IP blog. In his spare time, he works as the bandleader and bassist for the 8-piece jump blues band, The Slicked-Up 9’s, and plays bass in New York rock act, The Incumbents.

Education

  • Villanova University (JD)
  • Lehigh University (BSME)

Experience

  • Served as lead counsel on behalf of the plaintiffs in a 10-day jury trial concerning patent infringement, involving passive electronic components, in the Eastern District of New York. The jury returned a verdict in favor of the plaintiffs, finding infringement of both asserted patents (Am. Tech. Ceramics Corp. et al. v. Presidio Components, Inc., 14-06544-KAM (E.D.N.Y. 2014)
  • Representing an owner of patents directed to assembly and fastening technologies against automotive manufacturers and suppliers in the District of Delaware (Wildcat Licensing WI LLC v. General Motors et al., 1:19-cv-00833-MN-JLH, 1:19-cv-00834-MN-JLH, 1:19-cv-00839-MN-JLH, 1:19-cv-00840-MN-JLH ,1:19-cv-00842-MN-JLH, 1:19-cv-00843-MN-JLH, 1:19-cv-00844-MN-JLH, 1:19-cv-00845-MN-JLH, 1:19-cv-00846-MN-JLH) (D. Del.))
  • Serving as lead defense counsel in class action cases on behalf of Peter Thomas Roth Labs, LLC concerning false advertising allegations in the realm of cosmetics under various California, New York, Florida and Washington consumer laws (Peter Thomas Roth Labs LLC at el. v. Miller et al., 19-698 (N.D. Cal.); Peter Thomas Roth Labs LLC et al. v. Clair, 20-1220 (S.D.N.Y.))
  • Represented Intellectual Ventures II LLC in IPR proceedings concerning encapsulated stator motor technology (IPR2017-01537, IPR2017-01558)
  • Co-lead counsel for complainant in Certain Thermoplastic-Encapsulated Electric Motors, Components Thereof, and Products and Vehicles Containing Same (337-TA-1052)
  • Represented Patent Owners American Technical Ceramics Corp. and AVX Corporation in IPR proceedings concerning technology for multilayer capacitor structures (IPR2015-01330, IPR2015-01331)
  • Represented Patent Owner Footbalance System Oy in IPR proceedings concerning shoe insoles (Petition denied in IPR2015-01770; all claims upheld in IPR2015-01769)
  • Represented owner of electronic payment system patents in patent infringement litigation (MoneyCat v. PayPal, Inc., 14-2490 (N.D. Cal.))
  • Represented and achieved successful settlement for video-game developer and manufacturer in four-patent infringement litigation concerning motion-controlled video gaming (Shinsedai Co. Ltd. v. Nintendo Co., Ltd., 11-2799 (S.D. Cal.))
  • Allergan, Inc. v. Photomedex, Inc., et al., 8:07-cv-01316 (CDCA) - Represented Jan Marini Skin Research Inc., Peter Thomas Roth, Inc., and Peter Thomas Roth Labs LLC in a patent infringement case relating to certain hair growth products.
  • Presidio Components, Inc. v. American Technical Ceramics Corp., 07-893 (S.D. Cal.) – defended electrical components manufacturer in patent infringement action concerning multilayer capacitors.

Recognition & Awards

  • Included on the New York Super Lawyers: Rising Stars - Intellectual Property Litigation list (2014 - 2018)

Recent Insights

News & Press

Viewpoints

IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

Patent Owner Tips for Avoiding IPR Institution

March 1, 2022 | Blog | By William Meunier, Michael Renaud, Brad M Scheller

Inter partes reviews have a very high institution rate. And worse, once instituted IPRs result in invalidated claims at an inordinately high rate. The best defense against an IPR petition is to convince the Patent Trial and Appeal Board to deny institution. In this post, the Mintz IPR team put together out top six tips for avoiding IPR institution.
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Fintiv in Decline?

February 17, 2022 | Blog | By William Meunier, Brad M Scheller, Serge Subach

Going forward, parties litigating before the PTAB should consider the Fintiv factors comprehensively rather than zeroing-in on the procedural schedule in their parallel litigation. As the data suggests, an aggressive and fast-moving schedule alone may no longer result in a discretionary institution denial.
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Earlier this month, in Novartis Pharms. Corp., Inc. v. Accord Healthcare, Inc., et al., No. 2021-1070, the Federal Circuit issued a helpful decision concerning the not-often-discussed written description requirement. The panel specifically addressed whether sufficient written description can exist for claim limitations that are not explicitly or directly disclosed in the specification (including negative claim limitations). This new ruling provides patent owners with a useful guide for successfully navigating similar written description challenges in patent infringement cases. For example, Patent Owners seeking to combat written description requirement challenges should proffer expert witnesses who can clearly articulate how they understand the patent description in relation to the claims and what portions of that description support the same.
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USPTO’s New Deferred Subject Matter Eligibility Response Pilot Program

January 21, 2022 | Blog | By Brad M Scheller, Meena Seralathan

Recently, the U.S. Patent and Trademark Office (“USPTO”) published a notice informing the public that it will be implementing a pilot program (called the Deferred Subject Matter Eligibility Response Pilot Program, or the “DSMER Pilot Program”) to determine the value of allowing applicants to defer responding to 35 USC § 101 rejections (commonly known as “101 rejections” or “Alice rejections”). The Program is only available for certain applications, and certain procedures are required for participation; however, the Program has the potential to encourage more efficient patent prosecution. Below we answer some questions patent applicants are likely to have about the Program.
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Entire Market Value Rule Strikes Again in WDTX

January 19, 2022 | Blog | By Brad M Scheller, Marguerite McConihe, Robert Sweeney

On January 3, 2022, Magistrate Judge Susan Hightower granted a defendant’s motion to exclude an expert’s damages theory for violating the entire market value rule, reminding plaintiffs everywhere to use caution when applying the sales of an entire product as a royalty base.
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Patent Owner Tips for Surviving an Instituted IPR: From Depositions to Sur-Replies

January 14, 2022 | Blog | By William Meunier, Michael Renaud, Brad M Scheller

As a Patent Owner in an instituted Inter Partes Review (IPR), there are dozens of considerations to bear in mind – from strategically approaching depositions and maximizing expert testimony, to drafting the final say in your sur-reply. We provide a summary of key takeaways from throughout the series and invite you to access all of our tips for more detail on Surviving an Instituted IPR.
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Patent Owner Tip #19 for Surviving an Instituted IPR: Sur-Reply Strategies

October 25, 2021 | Blog | By Brad M Scheller, Courtney Herndon

In this final patent owner tip for surviving an instituted IPR we discuss sur-reply strategies. At this point, the Patent Owner has filed its Response, developed all the facts and evidence, and taken and defended expert depositions.
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Intellectual Property Viewpoints Thumbnail
We look to those circumstances when a patent owner should think twice about amending, including when significant past damages exist, the current claims possess strong infringement reads and claim scope, petitioners are highly-motivated to fight and patent owner is cost sensitive.
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Arthrex SCOTUS Ruling: The IPR Show Must Go On, Just with (a Bit) More Oversight

June 24, 2021 | Blog | By William Meunier, Brad M Scheller, Andrew DeVoogd

On Monday, in a highly-anticipated decision, a fractured Supreme Court issued its opinion in Arthrex v. Smith & Nephew, striking a portion of the America Invents Act (AIA) as unconstitutional—but providing an effectively toothless remedy.
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PTAB Continues Streak of IPR Denials

June 14, 2021 | Blog | By Brad M Scheller

US Patent Trial and Appeal Board (PTAB) institution denials for inter partes review (“IPR”) and other post-grant review petitions have steadily risen from 13 percent in 2012 to 44 percent in 2020. In 2020, the institution rate has fallen to 56%, down from 63% a year ago.
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News & Press

News Thumbnail
Mintz Member Brad Scheller was quoted in an article published by Law360 on the Patent Trial and Appeal Board’s precedential decision in Lectrosonics Inc. v. Zaxcom Inc., which demonstrates that “secondary considerations” evidence of nonobviousness, including industry praise, can prove a successful strategy for saving a patent.
This feature story discusses on the U.S. Patent and Trademark Office’s (USPTO) new final rule changing the claim construction standard for America Invents Act (AIA) reviews. Brad Scheller is among the intellectual property attorneys quoted providing commentary.
Mintz Members Kathleen Carr and Brad Scheller and Associate Inna Dahlin collaborated on an article for Bloomberg Law Patent, Trademark & Copyright Journal about the inter partes review “estoppel” rule, what circumstances may give rise to it, and how the courts can clarify and validate its use.
Fourteen Mintz attorneys have been named New York Super Lawyers for 2017 and thirteen have been named New York Rising Stars. New York Super Lawyers recognizes the top lawyers with the highest degree of peer recognition and professional achievements.  
Brad Scheller, a Member of the Mintz New York office, is featured in an American Lawyer profile. The article discusses Brad’s intellectual property practice and his passion for music outside the office.
The U.S. International Trade Commission (ITC) has announced it's launching an investigation into whether thermoplastic parts used in certain BMW, Honda, and Toyota vehicle models have infringed five patents owned by Intellectual Ventures LLC.
Mintz Member Brad Scheller, Associates Catherine Xu and Linyu Mitra, and Senior Patent Agent Gurneet Singh, authored this IP Frontline article discussing the U.S. Supreme Court case of Cuozzo Speed Techs. v. Lee, and its implications for patent practitioners.
Mintz Member Brad Scheller engaged in this in-depth Leaders League interview, providing commentary on the impact of the Brexit vote on the European Intellectual Property landscape, particularly as it pertains to the unitary patent and the United Patent Court.
Brad Scheller authored this IPFrontline article on the Patent Trial and Appeal Board’s Final Written Opinion “invalidating all examined claims of a mortgage processing patent as unpatentable for failing to claim patent eligible subject matter.”  
Thirteen attorneys from Mintz have been named New York Super Lawyers for 2014 and eleven have been named New York Rising Stars. The list will be published in a special advertising supplement in The New York Times Magazine and in a stand-alone magazine, New York Super Lawyers - Metro Edition.