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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 strategic counselor to start-up ventures and established businesses in the mechanical, electrical, and computer arts and a wide array of clean technologies. He represents clients before the United States Patent and Trademark Office and in federal district and appellate courts across the country. With a background in mechanical engineering and over 18 years of experience, Brad has successfully advised clients on patent portfolio growth and management and protected the rights of patent owners against infringers and invalidity challenges, as well as defend individuals and businesses against charges of infringement and related allegations.

Brad has served as both lead and co-counsel before judges and juries in United States district courts, the International Trade Commission and the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, where he has successfully defended patent owners’ rights against inter partes review challenges.

Brad is a Member of the Firm’s Energy & Sustainability Practice with a focus on representing clean technology clients in all aspects of intellectual property, licensing and technology growth, management and protection. He also co-chairs the Firm’s Post Grant Proceedings Practice and is co-editor of Mintz’ IP blog. In his spare time, he is the bassist for the 8-piece jump-blues band, The Slicked-Up 9’s, and New York rock act, The Incumbents.

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.
  • Served as lead counsel on behalf of the defendant in direct-competitor, 2-patent infringement litigation involving aesthetic laser technology and successfully drove the parties’ disputes to settlement in eight months and prior to the start of expert discovery. Solta Medical, Inc. v. Lumenis, Inc. et al., No. 19-11600-DJC (D. Mass. 2019).
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viewpoints

Energy & Sustainability IP Updates — December 2022

December 13, 2022 | Article | By Brad M Scheller

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Energy & Sustainability IP Updates — November 2022

November 14, 2022 | Article | By Brad M Scheller

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Energy & Sustainability IP Updates — October 2022

October 13, 2022 | Article | By Brad M Scheller

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Energy & Sustainability IP Updates — September 2022

September 6, 2022 | Article | By Brad M Scheller

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Energy & Sustainability IP Updates — August 2022

August 8, 2022 | Article | By Brad M Scheller

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Lost Profits – Who’s Sale is it Anyway?

August 1, 2022 | Blog | By Brad M Scheller, Robert Sweeney

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Rule 11—Use It Wisely

July 20, 2022 | Blog | By Brad M Scheller, Robert Sweeney

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SCOTUS Declines to Answer Calls for Clarification in American Axle v. Neapco

July 13, 2022 | Blog | By Brad M Scheller, Andrew DeVoogd, Matthew Karambelas, Amanda Metell

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Rule 11 Sanctions Appropriate for Frivolous Inventorship Pleading

July 13, 2022 | Blog | By Michael Renaud, Brad M Scheller, Robert Sweeney

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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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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.
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Events & Speaking

Oct
6
2022

Mintz’s First Annual Energy Transition Summit

40th Floor Conference Center, Mintz

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Recognition & Awards

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

Member

New York