Skip to main content

Courtney Herndon


[email protected]



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.


International Trade Commission

  • 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), (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.

Inter Partes Reviews

  • Represented GE Video Compression in defense of the ‘710 patent which claims improved techniques for using “binary arithmetic coding” to compress data and has been incorporated into leading video compression standards. (HEVC standard essential patent). PTAB denied institution of the petition in August 2019 which was filed in June by Unified Patents. IPR2019-00726
Read less


Another Implementer Hold Out Door Closes: The Death of the Anti-Suit Injunction?

February 28, 2024 | Blog | By Daniel Weinger, Andrew DeVoogd, Courtney Herndon, Laura Petrasky

Read more

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.
Read more

Invalidity of Terminal Patents Not Tied to Disclaimed Patent-in-Suit’s Expiration

October 6, 2021 | Blog | By Andrew DeVoogd, Courtney Herndon

In an interesting recent case of first impression, Judge Albright in the Western District of Texas denied a motion for judgement on the pleadings filed by Defendants Google and YouTube because the asserted patent was terminally disclaimed to two other patents that had been invalidated prior to its issuance. In VideoShare, LLC v. Google, LLC, 6:19-cv-663 (W.D. Tex. Sept. 29, 2021) (Albright, J.), the Court rejected the argument that the invalidation of the terminal patents was the “expiration” of the terminal patents, and that the asserted U.S. Patent No. 10,362,341 (“the ’341 patent”) was therefore also necessarily expired because it allegedly shares the expiration date of the terminal patents. Judge Albright concluded that, to the contrary, the prior finding of invalidity of the terminal patents had no impact on the expiry of the terminally-disclaimed ’341 patent.
Read more
Here are four tips for improving your chances of convincing PTAB to grant a motion to amend your claims.
Read more
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.
Read more
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.
Read more
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.
Read more

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.
Read more

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. 
Read more
Read less

News & Press

Press Release Thumbnail
Mintz is pleased to announce that 32 attorneys have been named Massachusetts Super Lawyers and 27 attorneys have been named Massachusetts Rising Stars for 2023.
Press Release Thumbnail
Mintz is pleased to announce that DC Office Managing Member Michelle Lipkowitz and Associate Courtney Herndon have been selected for the National Black Lawyers (NBL) “Top 100” list. Additionally, Associates Alain Mathieu, Allanah Wynn, Laura Martin, and Chris Lighten have been named to the National Black Lawyers' “Top 40 Under 40”.
Press Release Thumbnail
BOSTON – Mintz Associate Courtney Herndon has been included in the National Black Lawyers “Top 100” list of lawyers for the state of Massachusetts.
Press Release Thumbnail
35 Mintz attorneys have been named Massachusetts Super Lawyers and 25 Mintz attorneys have been named Massachusetts Rising Stars for 2022.
News Thumbnail
Law360 reported that the U.S. Court of Appeals for the Federal Circuit recently upheld the International Trade Commission's finding that a pair of bacteria strains used by German-based Jennewein infringed a Glycosyn milk patent. The article included a quote from Mintz Intellectual Property Member Michael Newman, noting that, in addition to Mr. Newman, Glycosyn was represented by Member and Chair of the firm's Intellectual Property Division Michael Renaud, Members Thomas Wintner and James Wodarski, and Associates Courtney Herndon and Matthew Karambelas.
Read less

Events & Speaking


IP in the Digital Age: Trends and Transformations

Boston Bar Association IP Year In Review Conference

Event Reference Image
Read less

Recognition & Awards

  • Shortlisted in Chambers USA as DEI Future Leader (2024)

  • Included on the Massachusetts Super Lawyers: Rising Star - Intellectual Property list (2022 & 2023)

  • Included on the National Black Lawyers - Top 100 Black Lawyers in the state of Massachusetts list (2023)

Read less


  • Member, Summer Search Boston Associate Board
  • 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
Read less