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Kevin C. Amendt

Associate

[email protected]

+1.617.348.4863

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As a patent attorney, Kevin's focus is on strategic IP counseling, including patent procurement, freedom to operate assessment, and post-grant proceedings before the USPTO and the Patent Trial and Appeal Board. He is known for identifying and capturing maximum value from his client’s innovations. His success on behalf of clients comes from his combination of strong technical and legal skills.

Kevin counsels clients on all aspects of the patent system including portfolio management, prosecution, freedom to operate assessments, and validity/infringement opinions. Kevin is trusted to assess the patent landscape and provide opinions on new products before they hit the public market. He helps clients obtain protection that reflect the technical details of their invention as well as their business plan. 

Kevin is involved in intellectual property disputes. He handles post-grant proceedings before the USPTO and the Patent Trial and Appeal Board, including ex-parte re-examinations and inter partes reviews (IPRs). 

Kevin has worked on behalf of entities ranging from individual inventors and venture-backed startups to academic institutions, hospitals, and large multinationals. His experience spans broad technical fields including telecommunications, 3G, 4G, and 5G wireless technologies, video coding, artificial intelligence, block chain, complex software systems, consumer electronics, signal processing,  robotics, and biotechnology.

Kevin graduated first in class and summa cum laude from Suffolk Law’s evening program while working full time at Mintz as a patent agent. Upon graduation he received the Daniel J. Fern Award for outstanding academic achievement. 

Before joining Mintz, Kevin worked as a systems engineer for Raytheon Corporation in their missile defense systems department. He has also worked for Science Applications International Corporation (SAIC), and Tangible Media, a research group with the MIT Media Laboratory. While pursuing his MS in Electrical and Computer Engineering, he focused on intelligent systems, robotics, and control.

Education

  • Suffolk University Law School (JD, summa cum laude)
  • University of California - San Diego (MS, Electrical and Computer Engineering)
  • Massachusetts Institute of Technology (BS, Electrical Engineering and Computer Science)

Experience

  • 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
  • Provide prosecution counseling for telecommunications company Altiostar, which is providing an open virtual radio access network (vRAN) technology for 4G LTE and 5G network implementation. The vRAN software can integrate operation of equipment from multiple vendors.
  • Provided strategic counseling including portfolio development, rendering patent opinions, and post grant review proceeding representation for telecommunications company Nextivity, Inc., providing 3G, and 4G booster/repeater systems for consumer home market.
  • Conduct portfolio diligence for Wireless Innovations, Inc. regarding portfolio of LTE standard essential patents acquired from Research in Motion including counseling on patent pool admissions and licensing.
  • Successful Defense of 12 IPRs – Three Dimensional Structure Memory Mintz represented Elm 3DS Innovations in a series of 14 IPRs filed by leading technology companies, including SK Hynix, Micron, and Samsung. We were hired as replacement counsel following institution of the IPRs which had been filed in late 2015 and early 2016. Final Written decisions in the proceedings were received in June and August 2017 and confirmed validity of all but 2 of 107 challenged claims. PTAB's determination was upheld on appeal to the Federal Circuit.
  • Ethertronics, Inc. v. Nextivity, Inc., DER2016-00021, Paper No. 35 (PTAB Oct. 2, 2017): On behalf of respondent, obtained decision denying institution of derivation proceeding.
  • Served as virtual in-house including management and prosecution of portfolio related to bill validators for a private equity-backed company spun out of one of the largest privately held companies in the United States. Also conducted landscape and freedom to operate analysis for new product releases.
  • Handle patent prosecution and invention harvesting for emerging e-sports company.
  • Handled worldwide patent portfolio strategy for an Inc. 500 international retail jewelry company.
  • Inter Partes Reexamination 95/001,874 – Represented Petitioner Camtek Ltd. in invalidating some claims of U.S. Patent No. 7,729,528 related to an automated wafer defect inspection system. All instituted claims were found invalid. Patent Trial and Appeal Board upheld decision on patent owner appeal.
  • Ambato Media LLC v. Clarion Co. Ltd et al., 2:09-cv-00242, (E.D. Texas) –Helped develop validity and infringement positions for patent owner Ambato Media, LLC in its patent infringement jury trial victory over Garmin International, Inc.

Recognition & Awards

  • Daniel J. Fern Award, Suffolk Law (Given annually to the graduate with the highest cumulative GPA)
  • Admiral Cochrane Leadership Award, MIT (Given annually to student-athlete who shows the highest qualities of humility, leadership, and inspiration)

Recent Insights

News & Press

Events

Viewpoints

Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

PATENT 101: Key Considerations and Activities for Establishing a Patent Program (Part 1 of 3)

July 7, 2021 | Blog | By Michael Van Loy, Kevin Amendt, Nicholas Eadie

Tasked with starting an innovation protection and patent development program at your company but do not know where to begin? This three part series describes the key components to a patent development program for any company, small or large.
Read more
Patent Litigation Viewpoint Thumbnail
The Court of Appeals for the Federal Circuit ruled in February that the Patent Trial and Appeal Board (PTAB) cannot cancel claims for indefiniteness in an inter partes review (IPR) proceeding. The case is Samsung Electronics America, Inc., v. Prisua Engineering Corp., case number 19-1169, in the U.S. Court of Appeals for the Federal Circuit.
Read more
Patent Litigation Viewpoint Thumbnail
The Court of Appeals for the Federal Circuit ruled in February that it was wrong for a judge to rule that a patent was ineligible under the Alice standard because there were underlying factual disputes that could not be resolved on summary judgement.
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail
Struggling to keep case law relating to subject matter eligibility organized?  In February 2018, the United States Patent and Trademark Office (USPTO) released an improved Eligibility Quick Reference Sheet, providing patent practitioners with a useful tool for analyzing claims in view of 35 U.S.C. § 101 subject matter eligibility requirements.
Read more
On August 25, 2017, the Patent Trial and Appeal Board issued a precedential opinion in Ex Parte McAward, reaffirming the Patent Office’s use of a lower pre-issuance threshold for indefiniteness distinct from the Supreme Court’s Nautilus standard.
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Why No One is Talking About Derivation Proceedings

November 2, 2016 | Blog | By Kevin Amendt

Someone stole your invention and filed for a patent on it? Derivation proceedings in the Patent Office may be an answer. The Leahy-Smith America Invents Act (AIA) amended 35 U.S.C. § 135 to replace interference proceedings with a new process called derivation proceedings.
Read more

The PTAB Explores Estoppel in New Representative Decision

May 11, 2015 | Blog | By Kevin Amendt, Brad M Scheller

The Patent Trial and Appeal Board ("the Board") recently announced the addition of its March 26, 2015 decision in Dell, Inc. et al. v. Electronics and Telecomms. Res. Inst., IPR2015-00549 (“the ‘549 IPR”) to its online list of Representative Orders, Decisions, and Notices.
Read more

News & Press

News Thumbnail
Law360 featured a Mintz patent litigation team as “Legal Lions” in its weekly list of the top verdicts for its representation of Elm 3DS Innovations, a patent licensing entity.

In a precedential opinion, the Federal Circuit affirmed decisions upholding the validity of nearly a dozen Elm patents on semiconductor technologies that accused infringers challenged at the Patent Trial and Appeal Board.

The Mintz team representing Elm includes Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Members William Meunier, James Wodarski and Michael Newman, Special Counsel Sandra Badin, and Associates Kevin Amendt and Matthew Galica.

Events

Speaker
Aug
7
2018

Legal Start-Up Workshop

Boston College’s Soaring Startup Circle

Boston, MA

Speaker
Jul
17
2017

Legal Start-Up Workshop

Boston College’s Soaring Startup Circle

Boston, MA

Speaker
Nov
5
2015

Patents in an Innovation Economy

CreaGen Life Science Incubator

Woburn, MA