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Courtney Herndon

Associate

[email protected]

+1.617.348.1871

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Courtney is an intellectual property attorney whose practice is focused on patent litigation in Federal District Courts and before the US International Trade Commission. She is also a key member of teams arguing cases at the Court of Appeals for the Federal Circuit.

Courtney is relied upon by trial team leaders for in-depth legal and economic analysis in cases involving global high tech, biotech and medical device companies. She is a key member of the team at all stages of trial preparation. She takes fact depositions, drafts and responds to pleadings and motions, and prepares witnesses and attorney teams for depositions. Courtney develops and drafts fact and expert witness statements, motions and responses, pleadings, briefs, and legal memoranda. She also prepares damages positions in federal district court cases and economic domestic industry positions unique to the ITC. In addition, Courtney researches and drafts appellate briefs and assists in preparing for oral argument before the Federal Circuit. Courtney also maintains an active pro bono practice, in which she counsels and represents clients in matters related to domestic and sexual violence, immigration, and civil appeals.

Courtney serves on the Advisory Committee formed by Mintz’s Managing Member to address issues related to the recruitment and retention of minority attorneys.  In conjunction with her role as member of the Intellectual Property Litigation recruiting committee, Courtney recruits and interviews diverse and intellectual property-focused summer associate and lateral candidates. She is also active in the firm’s diversity and associate mentoring programs. Courtney works closely with and mentors summer and junior associates of the Intellectual Property litigation section. She is active in MIATTY, the firm’s minority affinity group for attorneys and senior legal professionals of color, and Mintz’s Women’s Initiative, through which she mentors law students. Courtney was selected to serve as Mintz’s 2020-2021 representative to the Leadership Council for Legal Diversity’s Pathfinder Program for high-potential, early career attorneys.

Prior to joining Mintz, Courtney clerked for Associate Justice Geraldine Hines of the Massachusetts Supreme Judicial Court and Associate Justice Vickie L. Henry of the Massachusetts Appeals Court. During law school, Courtney served as a judicial intern to Judge William G. Young of the United States District Court, District of Massachusetts, and to Justice Hines (then an Associate Justice of the Massachusetts Appeals Court).

While attending New England Law, Courtney was a three-time recipient of the New England Scholar Award and served as the Editor-in-Chief of the New England Law Review. At her law school commencement, Courtney was honored with the Trustee Bradbury Gilbert Award for Excellence in Achievement.

Education

  • New England Law (JD, magna cum laude)
  • University of Washington (BA, Political Science)

Experience

International Trade Commission

  • Certain Digital Video-Capable Devices and Components Thereof (337-TA-1224) – Representing Koninklijke Philips N.V. and Philips North America LLC as Complainants before the ITC, and in District of Delaware and Central District of California actions. The asserted patents claim foundational content-protection technology widely implemented in, for example, ultra-high definition digital video-capable devices using the HDCP 2.2. standard, such as computers, displays, and televisions. Hearing scheduled for Summer 2021.
  • Certain Human Milk Oligosaccharides and Methods of Producing the Same (337-TA-1120) – Represented Glycosyn LLC as complainant before the ITC against respondent Jennewein Biotechnologies GmbH, a large global competitor. The complaint alleged unlawful and unauthorized importation and production and/or manufacture of 2'-fucosyllactose oligosaccharides that directly infringe one or more claims of Glycosyn's U.S. Patent No. 9,453,230. Following oral hearing in May 2019, the Administrative Law Judge issued an Initial Determination finding that Jennewein had infringed claims of Glycosyn’s patent and recommended that a limited exclusion order issue, including a certification provision with heightened requirement.

Federal Circuit Appeals

  • Jennewein Biotechnologie GmbH v. International Trade Commission and Glycosyn LLC (Fed. Cir. 2020) – Represented intervenor Glycosyn LLC in defending favorable International Trade Commission final determination. Case pending.
  • Samsung Electronics Co., Ltd., Micron Technology, Inc., SK Hynix Inc. v. Elm 3DS Innovations, LLC, 2017-2474, 2017-2475, 2017-2476, 2017-2478, 2017-2479, 2017-2480, 2017-2482, 2017-2483, 2018-1050, 2018-1079, 2018-1080, 2018-1081, 2018-1082 (Fed. Cir.) – Successfully represented Elm 3DS Innovations in defending the appeal of highly favorable final written decisions entered by the Patent Trial and Appeal Board (PTAB) in thirteen inter partes reviews. PTAB held that petitioners did not establish the unpatentability of 105 claims across eleven patents, and the Federal Circuit affirmed the PTAB’s decisions.

Federal District Court

  • SMIC Americas, et al. v. Innovative Foundry Technologies LLC (NDCA, 4:20-cv-02256) - Representing Innovative Foundry Technologies LLC in a declaratory judgment action of non-infringement. The matter resolved favorably following our client's motion to dismiss.
  • Parus Holdings, Inc. v. Apple Inc., et al., 6:19-cv-432-ADA (lead case) (W.D. Tex.) – Represent plaintiff Parus asserting two voice controlled information retrieval patents against consolidated defendants Apple (Siri), Google (Google Assistant), Amazon.com (Alexa), Samsung (Bixby), and LG in the Western District of Texas. Trial is scheduled for the summer of 2021.
  • CellInfo, LLC v. American Tower Corporation, et al., (D. Mass. No. 1:18-cv-11250) - Defended American Tower Corporation in a trade secrets action in which we successfully dismissed in favor of arbitration.
  • Copan Italia SpA et al v. Puritan Medical Products Company LLC et al, 1:18-cv-00218 (D. Me) - Representing Copan Italia in asserting patent infringement and unfair competition claims against our client’s largest competitor, in a case involving the use of flocking technology (common in the textile industry) in the production of swabs to be used for the collection of biological specimen.

Involvement

  • Member, LCLD 2020 Pathfinder Program
  • Member, American Bar Association
  • Member, Asian American Lawyers Association of Massachusetts
  • Member, Boston Bar Association
  • Co-Chair, Boston Bar Association Senior Associates Forum
  • Member, Boston Patent Law Association
  • Member, Massachusetts Bar Association
  • Member, Massachusetts Black Lawyers Association
  • Member, Women's Bar Association
  • Lifetime Member, University of Washington Alumni Association

Viewpoints

IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
As we have previously discussed, expert testimony is a critical aspect of the Patent Owner’s case-in-chief of an inter partes review (“IPR”) proceeding. In addition to retaining the right expert witness and maximizing that expert’s testimony in the expert declaration, it is imperative that expert testimony is supported by objective, contemporaneous documentary evidence.
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
Drafting the expert declaration is another critical task for Patent Owners during the inter partes review (“IPR”) discovery period. As noted in our previous post, IPR expert witnesses provide declarations as affirmative testimony in lieu of live testimony before the Board at the hearing.
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Patent Litigation Viewpoint Thumbnail
Recently in Nike, Inc. v. Skechers U.S.A., Inc., 2:17-cv-08509 (C.D. Cal.) (October 26, 2020), the U.S. District Court for the Central District of California granted-in-part and denied-in-part Defendant, Skechers U.S.A., Inc.’s (“Skechers”), motion to limit Plaintiff, Nike, Inc.’s (“Nike”), claim seeking attorney’s fees related to the infringement of its eight asserted design patents, resulting in the bifurcation of the willfulness issue from the trial on the merits.
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Federal Circuit Appeals Viewpoint Thumbnail

Federal Circuit: Licensees’ Failure to Mark Eliminates Entitlement to Pre-Suit Damages

July 27, 2020 | Blog | By Adam Samansky, Peter Cuomo, Matthew Karambelas, Courtney Herndon

Recently, in Packet Intelligence LLC v. NetScout Sys., Inc., No 19-2041 (July 14, 2020), the Court of Appeals for the Federal Circuit reversed a jury verdict of $3.5 million in pre-suit damages and vacated the trial court’s enhancement of that award because licensees of the asserted patents failed to properly mark allegedly patent practicing products.
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Intellectual Property Viewpoints Thumbnail

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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Intellectual Property Viewpoints Thumbnail
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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Viewpoint Thumbnail
In a decision with potential far-reaching implications, Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit held Thursday that appointments of Administrative Patent Judges of the Patent Trial and Appeal Board violated the Appointments Clause of the U.S. Constitution.
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Viewpoint Thumbnail
Recently, in a patent infringement action pending in the Eastern District of Michigan, Webasto Thermo & Comfort N. Am., Inc. v. BesTop, Inc., No. 2:16-cv-13456, Order No. 209 (E.D. Mich. May 20, 2019) (Borman, J.), the court overruled defendant BesTop’s objections to the Special Master’s recommendation to grant plaintiff, Webasto’s, motion to strike BesTop’s second amended noninfringement and invalidity contentions.
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Viewpoint Thumbnail

The Tall Tale of the Domestic Industry

March 4, 2019 | Blog | By Michael Renaud, James Wodarski, Marguerite McConihe, Courtney Herndon

There is a common misconception the domestic industry economic prong requirement is insurmountable and an unknowable factor in a patent infringement action at the International Trade Commission (“ITC” or “Commission”), especially for foreign-based companies or non-practicing entities (“NPEs”). This could not be further from the truth. Those in the trenches at the ITC have seen recent trends that show with effective and strategic pre-suit diligence, creative thinking, and experienced counsel, the domestic industry requirement is no bar to a successful investigation.
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Viewpoint Thumbnail
Recently, in ZTE (USA) Inc. v. Fundamental Innovation Int’l LLC, IPR2018-00425, Paper No. 34 (Feb. 6, 2019), the Patent Trial and Appeal Board (“PTAB”) allowed Petitioner’s motion to retroactively correct its defective IPR petition to identify a previously undisclosed real party in interest and thereby avoid a mandatory statutory bar.   
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