Brad is an experienced patent litigator and strategic counselor to start-up ventures and established businesses in the mechanical and electrical arts, with a focus in EV and battery technologies, as well as trade secret registration, management and protection. He represents clients before the United States Patent and Trademark Office and in federal district and appellate courts across the country. For 20 years Brad has successfully advised clients on patent portfolio growth and management, protected the rights of patent owners against infringers and invalidity challenges, and defended and businesses against charges of infringement and related allegations.
Brad has served as lead 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.
Brad is a Member of the Firm’s Energy & Sustainability Practice with a focus on representing EV battery companies on 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, New York rock act, The Incumbents and several other local bands.
Experience
- Represented Mullen Industries in federal district court and in defense of 12 inter partes review petitions against Apple. Defeated IPRs filed by Apple against four different patents and the case settled thereafter to avoid significant litigation expenditure. Mullen Industries, LLC v. Apple, Inc., No. 5:23-cv-00437 (N.D. Cal. 2022).
- Represented Kostopoulos Investment Holdings against patent infringement allegations with respect to shockwave therapy technologies; drove dispute to favorable settlement before initiation of claim construction proceedings. SoftWave Tissue Regeneration Technologies, LLC v. Dr. Har Hari S. Khalsa, DC, d/b/a Transformational Healing Universe, Thomas Kostopoulos, and Kostopoulos Investment Holdings, LLC d/b/a StemWave, Case No. 2:22-cv-07810-MCS-RAO (C.D.Cal. 2022).
- Represented WePower Technologies in trade secret misappropriation litigation alleging theft of bankruptcy assets relating to energy harvesting technology and achieved favorable settlement. WePower Technologies LLC v. GenerEn, LLC, 7:22-cv-03364 (S.D.N.Y. 2022).
- Represented Nanofiber Solutions against patent infringement allegations with respect to electrospun nanofiber wound-healing devices; drove case to favorable settlement following dispositive claim construction ruling in favor of Defendants. Acera Surgical, Inc. et al. v. Nanofiber Solutions, LLC et al., 1:20-cv-00980-CFC-JLH (D. Del. 2020).
- Represented Interactive Digital Solutions against patent infringement allegations with respect to patient monitoring systems; drove case to favorable settlement following disclosure of non-infringement positions and invalidity contentions. CareView Communications, Inc. v. Interactive Digital Solutions, LLC, No. 4:2021-cv-07061-HSG (N.D.Cal. 2021).
- 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).
- Served as lead counsel for American Technical Ceramics and AVX Corporation in a 10-day jury patent trial concerning passive electronic components in the Eastern District of New York. The jury returned a verdict of infringement for plaintiffs. Am. Tech. Ceramics Corp. et al. v. Presidio Components, Inc., 14-06544-KAM (E.D.N.Y. 2014).
- Represented 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.)).
- Served as lead 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).
- 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.)).
- 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. Allergan, Inc. v. Photomedex, Inc., et al., 8:07-cv-01316 (CDCA 2009).
viewpoints
Entire Market Value Rule Strikes Again in WDTX
January 19, 2022 | Blog | By Brad M Scheller, Marguerite McConihe, Robert Sweeney
Patent Owner Tips for Surviving an Instituted IPR: From Depositions to Sur-Replies
January 14, 2022 | Blog | By William Meunier, Michael Renaud, Brad M Scheller
As a Patent Owner in an instituted Inter Partes Review (IPR), there are dozens of considerations to bear in mind – from strategically approaching depositions and maximizing expert testimony, to drafting the final say in your sur-reply. We provide a summary of key takeaways from throughout the series and invite you to access all of our tips for more detail on Surviving an Instituted IPR.
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Patent Owner Tip #19 for Surviving an Instituted IPR: Sur-Reply Strategies
October 25, 2021 | Blog | By Brad M Scheller, Courtney Herndon
In this final patent owner tip for surviving an instituted IPR we discuss sur-reply strategies. At this point, the Patent Owner has filed its Response, developed all the facts and evidence, and taken and defended expert depositions.
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Patent Owner Tip #14 for Surviving an Instituted IPR: When Not to Amend Claims in an IPR
August 12, 2021 | Blog | By Brad M Scheller, Sean Casey
We look to those circumstances when a patent owner should think twice about amending, including when significant past damages exist, the current claims possess strong infringement reads and claim scope, petitioners are highly-motivated to fight and patent owner is cost sensitive.
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Arthrex SCOTUS Ruling: The IPR Show Must Go On, Just with (a Bit) More Oversight
June 24, 2021 | Blog | By William Meunier, Brad M Scheller, Andrew DeVoogd
On Monday, in a highly-anticipated decision, a fractured Supreme Court issued its opinion in Arthrex v. Smith & Nephew, striking a portion of the America Invents Act (AIA) as unconstitutional—but providing an effectively toothless remedy.
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PTAB Continues Streak of IPR Denials
June 14, 2021 | Blog | By Brad M Scheller
US Patent Trial and Appeal Board (PTAB) institution denials for inter partes review (“IPR”) and other post-grant review petitions have steadily risen from 13 percent in 2012 to 44 percent in 2020. In 2020, the institution rate has fallen to 56%, down from 63% a year ago.
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Patent Owner Tip #9 for Surviving an Instituted IPR: Issues Warranting Limited Additional Discovery
June 10, 2021 | Blog | By Brad M Scheller, Monique Winters Macek
In our previous post we started talking about discovery procedures in inter partes review (“IPR”) proceedings under 37 CFR § 42.51 and, in particular, the scope and timing of seeking limited additional discovery under Rule 42.51(b)(2). We reviewed timing considerations and emphasized the importance of anticipating the need for additional discovery and, to the extent necessary, moving the Board as early as possible following Institution.
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PTAB Admits Mistake, Reverses, and Institutes
June 8, 2021 | Blog | By Brad M Scheller, James Thomson
In a rare turn of events the Patent Trial and Appeal Board recently granted a rehearing request in Maxlite, Inc. v. Jiaxing Super Lighting Elec. Appl. Co., Ltd., No. IPR2020-00208, Paper 14 (P.T.A.B. June 1, 2021), stating that “we abused our discretion in denying institution” based on an improper allocation of the parties’ burdens when a petitioner challenges an alleged priority date.
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Patent Owner Tip #4 For Surviving An Instituted IPR: Take the Time to Use Your Expert as an Expert
April 29, 2021 | Blog | By Brad M Scheller, Nana Liu
The expert declaration provides a unique opportunity for Patent Owners to bolster their case during the discovery period of an inter partes review (“IPR”) proceeding. We previously detailed how to effectively use an expert declaration in the Patent Owner’s Preliminary Response (“POPR”). Now we turn to maximizing your expert’s testimony for the Patent Owner’s Response (“POR”).
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The Federal Circuit Provides New Guidance for Patent Licensees Wishing to Challenge the Licensed Patent’s Validity
April 21, 2021 | Blog | By Brad M Scheller, Peter Cuomo, Monique Winters Macek, Mark Hammond
The Federal Circuit in Apple Inc. v. Qualcomm Incorporated handed down a decision on April 7, 2021 that provides guidance on the determination of standing for patent licensees who wish to contest the validity of a patent or patents in a licensed portfolio.
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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.
Events & Speaking
Recognition & Awards
Included on the New York Super Lawyers: Rising Stars - Intellectual Property Litigation list (2014 - 2018)
Recent Insights
New Opportunities from DOE for Domestic Manufacturing of Advanced Batteries
February 12, 2024|
Energy & Sustainability IP Updates — February 2024
February 1, 2024| Article|
