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Brad M. Scheller

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+1.212.692.6761

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Brad Scheller is a trial attorney who focuses his patent litigation practice on representing clients in the automotive devices, thermoplastics, electronic components and consumer products industries in federal district court, before the Patent Trial and Appeal Board and at the International Trade Commission. With a background in mechanical engineering and over 14 years of experience practicing law, Brad has successfully represented patent owners in enforcing their rights against infringers and protecting those rights from challenges of invalidity, and has also successfully defended and negotiated settlements for client innovators accused of infringement and unfair commercial practices.

Brad focuses his litigation practice on patent disputes in Federal District Courts, including the Eastern District of Texas, Southern District of California, District of Delaware, Northern District of California and the Eastern District of New York, as well as at the International Trade Commission. Brad has handled disputes involving a variety of technologies, including electric motors, thermoplastics, electrical components, electronic payment and financial systems, computer software and various consumer products, including cosmetics, video game systems and personal watercraft.

Brad also has extensive experience in inter partes review (IPR) and covered business method patent review proceedings before the Patent Trial and Appeal Board and repeatedly defends and successfully preserves the rights of patent owners before this tribunal. He is well-versed in the particularities of post-grant proceedings from both the petitioner and patent owner perspective and provides comprehensive post-grant counseling to clients, including advising on post-grant proceedings concurrent with federal district court litigation and International Trade Commission investigations. As a registered patent attorney, Brad enjoys representing his clients in patent office proceedings on a variety of technology.

Brad also counsels individual inventors and emerging ventures on product development strategies, renders patent clearance and validity opinions and manages the preparation and prosecution of patent applications and portfolios in various high-technology and consumer products fields.

Brad is Co-Editor for and contributor to the Mintz Global IP Matters blog and co-chairs the firm’s Post-Grant Working Group committee.

Before joining Mintz, Brad practiced at the New York intellectual property boutique, Morgan & Finnegan LLP. He also 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

  • Defense of Multiple IPRs concerning Multilayer Capacitor Technology – successfully represented American Technical Ceramics Corp. and AVX Corporation in IPR proceedings before the PTAB concerning technology for multilayer capacitor structures.
  • Defense of Multiple IPRs concerning Thermoplastic Insole Technology – successfully represented Footbalance System Oy in IPR proceedings before the PTAB concerning technology for thermoplastic insoles for footwear.

Recognition & Awards

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

Recent Insights

News & Press

Viewpoints

Viewpoint
Today the United States Supreme Court unanimously affirmed the Federal Circuit and held that it remains the law under the America Invents Act (AIA) that a confidential sale to a third party can trigger the “on sale” bar to patentability.
Viewpoint
Today the Patent Trial and Appeal Board announced a final rule changing the claim construction standard for interpreting claims in inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patent (“CBM”) proceedings.  The Board retired the broadest reasonable interpretation (“BRI”) standard in favor of the standard used to construe patent claims in federal court and the International Trade Commission (“ITC”) as articulated in Phillips v. AWH Corp.  In doing so, the Board announced that it will now consider prior constructions, either from a federal district court or the ITC, in construing a claim term in an IPR, PGR, or CBM, where such prior constructions are timely made of record.  This rule change is another positive development for patent owners and should provide for consistent construction of the same term across multiple tribunals going forward.
Viewpoint
Last week, the Patent Trial and Appeal Board (the “Board”) denied a second challenge to a patent where the petitioners were co-respondents in an ITC investigation. 
The Federal Circuit affirmed the Patent Trial and Appeal Board’s inter partes review decision declaring various claims of patent owner Thales’ U.S. Patent No. 6,474,159 (“the ‘159 patent”) nonobvious.
The Medicines Company (“MedCo”) appealed findings of no infringement made by the United District Court for the District of Delaware. Hospira cross-appealed the district court’s finding that a distribution agreement did not constitute an invalidating “offer for sale” under 35 U.S.C. § 102(b).
On Monday, November 27, 2017, the Supreme Court heard oral arguments in SAS Institute v. Matal.
On November 21st, the PTAB issued guidance on motions to amend based on the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
In issuing its precedential decision earlier this month in Two-Way Media v. Comcast, the Federal Circuit affirmed a Delaware district court determination that four data streaming patents were directed to ineligible subject matter pursuant to § 101 and the Alice framework.
On September 6, 2017, an expanded panel of the Patent Trial and Appeal Board issued an “informative” decision in General Plastic Industrial Co., Ltd, v. Canon Kabushiki Kaisha setting forth the Board’s framework for analyzing follow-on inter partes review (IPR) petitions.
The Federal Circuit yesterday issued an opinion in In re: Smith Int’l, Inc., No. 2016-2303 (Fed. Cir. Sept. 26, 2017) reversing an affirmance by the Patent Trial and Appeal Board of the rejection of several claims of U.S. Patent No. 6,732,817 being challenged in ex parte reexamination.

News & Press

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.