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Brad M. Scheller

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[email protected]

+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 – representing Intellectual Ventures II LLC in IPR proceedings before the PTAB concerning encapsulated stator motor technology.
  • Certain Thermoplastic-Encapsulated Electric Motors, Components Thereof, and Products and Vehicles Containing Same (337-TA-1052) - represented complainant in this ITC investigation and in parallel Federal District Court cases.
  • 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.
  • Zero Gravity Inside, Inc. v. Footbalance System Oy (IPR2015-01769, -1770) – Represented Patent Owner in IPR proceedings before the PTAB concerning shoe insoles. IPR2015-01770 petition denied in January 2017; all claims upheld in February 2017 following oral argument in IPR2015-01769.
  • American Technical Ceramics Corp. v. Presidio Components, Inc., 14-6544 (E.D.N.Y.) – representing leading international manufacturer and supplier of electronic passive components in 3-patent infringement litigation concerning capacitor technology.
  • MoneyCat v. PayPal, Inc., 14-2490 (N.D. Cal.) – represented owner of portfolio of electronic payment system patents in 3-patent infringement litigation.
  • Shinsedai Co. Ltd. v. Nintendo Co., Ltd., 11-2799 (S.D. Cal.) – represented video- and lifestyle-gaming technology developer and manufacturer in 4-patent infringement litigation concerning motion-controlled video games and game systems; favorable settlement terms achieved.
  • Allergan v. Peter Thomas Roth Labs, LLC, 07-1316 (C.D. Cal.) – Defended skin care company in patent infringement and unfair competition action; favorable settlement terms achieved in view of winning claim construction ruling and summary judgment of non-infringement.
  • 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

Viewpoint General

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.
Viewpoint General

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.
Viewpoint General

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.
Viewpoint General

PTAB Denies Institution of IPR after Successive Petitions by Unrelated Co-Defendants

September 11, 2018 | Blog | By Brad M Scheller, Daniel Weinger, Courtney Herndon

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. 

Establishing Obviousness: A Fundamental Case of Evidence Over Arguments

March 1, 2018 | Blog | By Brad M Scheller, Lily Zhang

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 v. Hospira, Inc.

February 14, 2018 | Blog | By Brad M Scheller

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).

SAS v. Matal – Overview of Oral Arguments in the Supreme Court

December 12, 2017 | Blog | By Adam Samansky, Brad M Scheller, Inna Dahlin

On Monday, November 27, 2017, the Supreme Court heard oral arguments in SAS Institute v. Matal.

PTAB Guidance on Motions to Amend in View of Aqua Products

November 30, 2017 | Blog | By Brad M Scheller, Jinnie Reed

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).

Federal Circuit Affirms Delaware Alice Decision

November 16, 2017 | Blog | By Michael Renaud, Brad M Scheller, Tiffany Knapp

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.

General Plastic Industrial Co. v. Canon Kabushiki Kaisha: PTAB Explains Factors for Follow-On Petitions

October 9, 2017 | Blog | By Brad M Scheller, Peter Cuomo, Inna Dahlin

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.

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.

The Current State of IPR Estoppel

January 5, 2018 | Bloomberg BNA Patent, Trademark & Copyright Journal

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.