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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.))
  • Defended and achieved successful settlement for skin care company in patent infringement and unfair competition action (Allergan v. Peter Thomas Roth Labs, LLC, 07-1316 (C.D. Cal.))
  • 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

Tip #4 for Avoiding IPR Institution: Don’t Argue Facts

November 9, 2020 | Blog | By Brad M Scheller, Serge Subach

We’ve previously written that the best defense to an IPR challenge is avoiding IPR institution altogether. In addition to the other tips discussed in this series of posts, another strategy for avoiding institution is focusing the Patent Owner’s Preliminary Response (“POPR”) on areas where the Petitioner failed to adequately support its argument.
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Avoiding IPR Institution: Your Best Defense to an IPR Challenge

October 27, 2020 | Blog | By Peter Cuomo, William Meunier, Brad M Scheller

The United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) was once famously referred to by the former chief judge of the Federal Circuit, the honorable Randall Rader, as a patent death squad.
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Federal Circuit Reminds PTAB That Short Cuts Are Not Allowed

August 11, 2020 | Blog | By Brad M Scheller

Last month, in a precedential decision, the Federal Circuit vacated-in-part and remanded the Patent Trial and Appeal Board’s (“Board”) obviousness determination regarding Alacritech’s computer networking patent because the Board failed to adequately explain its findings for three of the challenged claims.
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Sort It Out: Cell Sorting Method with Data Processing Steps Patent Eligible

August 11, 2020 | Blog | By Brad M Scheller, Jeff Giering

In XY, LLC v. Trans Ova Genetics, LC (Case 2019-1789, issued July 31, 2020), the Federal Circuit provided another example of a life sciences method claim avoiding patent ineligibility under the Alice framework at step one, altogether avoiding the “inventive concept” analysis under step two. 
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Federal Circuit Appeals Viewpoint Thumbnail
Yesterday we discussed the Federal Circuit’s decision in Uniloc 2017 LLC v. Hulu, LLC  confirming the Board’s authority to review contingent substitute claims after the original claims have been held invalid by a federal court.  Today we cover the panel’s ruling that the Board can use any patentability requirement to evaluate and reject proposed substitute claims in an IPR, notwithstanding that originally-petitioned claims in such proceedings can only be challenged under §§ 102 and 103 based on prior patents and printed publications.
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Federal Circuit Appeals Viewpoint Thumbnail
Last week a Federal Circuit panel in Uniloc 2017 LLC v. Hulu, LLC issued an important decision regarding inter partes review (IPR) before the Patent Trial and Appeal Board on two questions concerning contingent motions to amend—(i) whether the Office has statutory authority to review the patentability of substitute claims after a final federal-court judgement of invalidity of those claims and, if yes, (ii) whether that review of patentability may include analyzing the substitute claims for patent eligibility under 35 U.S.C. § 101. 
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Intellectual Property Viewpoints Thumbnail
On June 11, 2020, the Patent Trial and Appeal Board (“PTAB”) designated as informative a July 26, 2019 institution decision granting post-grant review of a design patent for lacking ornamentality. In this ruling, the PTAB provides insight into how it analyzes the unpatentability of a design patent due to lack of ornamentality in post-grant proceedings at the institution stage.
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Federal Circuit Appeals Continue as Scheduled Without In-Person Arguments

May 19, 2020 | Blog | By Brad M Scheller, Jessica Perry

Yesterday the United States Court of Appeals for the Federal Circuit released modifications to court procedures, indicating that all in-person oral arguments are suspended until further notice.
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Intellectual Property Viewpoints Thumbnail
Last week, the US Patent and Trademark Office (“USPTO”) released a report detailing its findings on how the U.S. Supreme Court decision in Alice Corp. v. CLS Bank International, as well as subsequent USPTO guidance on 35 U.S.C. § 101 rejections, has affected rates of, and variability between, office action rejections.
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Intellectual Property Viewpoints Thumbnail
Last week, the Patent Trial and Appeal Board (“PTAB”) designated a January 24, 2020 decision, finding objective indicia of nonobviousness, such as evidence of long-felt need and industry praise, saved a patent owner’s amended claims from invalidation, as precedential.
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News & Press

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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.