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.))
- 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
Viewpoints
News & Press
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.
Viewpoints
PTAB Designates As Informative a Decision Instituting Post-Grant Review for a Design Patent Lacking Ornamentality
June 16, 2020 | Blog | By Brad M Scheller, Vincent Ferraro, Meena Seralathan
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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Recent USPTO Report Suggests Greater Consistency and Predictability in Patent-Ineligible Subject Matter Rejections
April 28, 2020 | Blog | By Brad M Scheller, Meena Seralathan
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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Recently Designated Precedential PTAB Decision Confirms Objective Indicia of Nonobviousness Can Rescue Patents from Invalidation at the PTAB
April 21, 2020 | Blog | By Brad M Scheller, Vincent Ferraro, Meena Seralathan
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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Informative Whirlpool Decision Reaffirms Importance of Secondary Considerations
April 21, 2020 | Blog | By Brad M Scheller, Courtney Herndon
Recently on April 14, 2020, the Patent Trial and Appeal Board (“Board”) designated Ex parte Whirlpool Corp., Appeal 2013-008232 (Oct. 30, 2013) “Informative”. In Whirlpool, the Board reversed the Examiner’s obviousness rejection of claims 1, 4, 6, and 8 of U.S. Patent No. 6,082,130 (“the ’130 patent”), finding that the Patent Owner, Whirlpool Corporation, established a nexus between its objective evidence of non-obviousness and the claimed invention.
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Mintz Rings in 2020 with Top 10 Recognition for ITC Practice
January 6, 2020 | Blog
Mintz is recognized as among the top ten firms in ITC Section 337 litigation by Patexia in its inaugural "ITC Intelligence Report". 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.
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Can Infringement Contentions be Amended to Add New Claims Resulting from an Ex Parte Reexam Filed after IPRs Invalidated Some but Not All Claims?
November 5, 2019 | Blog | By Brad M Scheller, Rithika Kulathila
Judge Gilliam of the Northern District of California recently answered this question and provided helpful guidance on the interplay of IPRs, reexaminations and district court litigation. In IXI Mobile (R&D) Ltd., et al., v. Samsung Elec. Co. Ltd. and IXI Mobile (R&D) Ltd., et al. v. Apple Inc., Judge Gilliam denied plaintiffs’ (“IXI”) motion for leave to amend their infringement contentions and asserted claims because IXI was not diligent in identifying new contentions or new accused products.
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Precedential PTAB Panel Says Petitioners Can Join Their Own Earlier-Filed IPRs and Join New Issues in Limited Circumstance
March 19, 2019 | Blog | By William Meunier, Brad M Scheller, Vincent Ferraro, Rithika Kulathila
In its first decision since its inception, the Precedential Opinion Panel (“POP”) for the U.S. Patent Trial and Appeal Board (“Board”), in Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00914, held that under 35 U.S.C. § 315(c) the Board has discretion to allow a party, in limited circumstances, to join its own earlier-filed inter partes review (“IPR”) and join new issues, even if the party was otherwise time-barred under 35 U.S.C. § 315(b). Specifically, the Board may use this discretion only where fairness requires it and to avoid undue prejudice to a party. The POP nevertheless denied Proppant Express Investments LLC’s (“Petitioner”) motion for joinder as Petitioner’s motion was “a result of Petitioner’s errors,” and therefore did not fall within the limited circumstances it envisioned.
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Supreme Court Holds AIA Did Not Alter the Settled Meaning of “On Sale”
January 22, 2019 | Blog | By Brad M Scheller, Peter Snell, Vincent Ferraro
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.
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PTAB Adopts the Phillips Claim Construction Standard in AIA Proceedings
October 11, 2018 | Blog | By Brad M Scheller, Daniel Weinger, Courtney Herndon
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.
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News & Press
PTAB Case Highlights Power Of Nonobviousness Arguments
April 24, 2020
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.
AIA Claim Construction Change To Spur Revamped Strategies
October 11, 2018
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.
The Current State of IPR Estoppel
January 5, 2018
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.
Mintz Partner Plays More Than One Tune
July 20, 2017
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.
Cuozzo and Its Likely Impact
July 6, 2016
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.
Brad Scheller (Mintz): “The unitary patent will be devalued to an extent because of the UK exit”
June 28, 2016
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.