Representative AI & IP Transactions

• Vercept AI / Anthropic — Advised the founders of Vercept AI on AI-related legal issues in connection with its acquisition by Anthropic, including intellectual property ownership and transfer, open source software compliance, and AI/OS level technology considerations central to agent based systems.
• Searchlight Capital Partners — Advising Searchlight Capital Partners on the strategic acquisition of and investments in multiple AI companies and AI-enabled assets across a range of industry verticals, with a focus on diligence and risk allocation related to AI technologies, data rights, and IP.
• Corellium, Inc. / Cellebrite — Advised Corellium, an ARM-based virtualization and cybersecurity software company, on complex IP and AI adjacent issues, including an IP licensing campaign and its acquisition by Cellebrite, a global leader in AI-powered digital investigative and intelligence solutions. Work included high-risk patent, trade secret, and copyright matters critical to the transaction.
• Royal Philips / SpectraWAVE — Advised Royal Philips, a global health technology leader, on AI and IP issues in expanding its intravascular imaging and physiological assessment device portfolio, including the acquisition of SpectraWAVE, Inc., an innovator in AI-enabled vascular imaging, angiography based physiology assessments, and medical imaging software.
• Activate Capital Management, LP — Advised a growth-stage venture capital firm on IP structuring and AI-related risk mitigation in connection with portfolio company acquisitions and restructurings, including optimal IP assignment strategies, open source software compliance, impacts on existing software licenses, and AI-related workforce considerations in the US and abroad.
• Wavecrest Growth Partners / Dealerware — Advising Wavecrest Growth Partners on IP and AI issues in connection with the acquisition of AI portfolio assets, including Dealerware, a leading AI-driven software platform for dealer fleet and mobility program management.
• Cultivo / Kateri – Advised Cultivo, a public benefit corporation leveraging geospatial analysis, satellite imagery, machine learning, and generative AI for ecosystem enhancement, on AI and IP issues related to its acquisition of Kateri, a provider of soil carbon and environmental data technology.
• Fulgent Genetics — Mitigated liability risks related to open source software and AI-powered software licensed from third parties on behalf of a clinical diagnostics and therapeutics company.
• Ondas Holdings Inc. (IPO) — Advised Ondas Holdings, a provider of mission critical networks, autonomous drone infrastructure, counter UAV systems, and artificial intelligence solutions, on IP and AI issues in connection with its initial public offering.
• Advanced Micro Devices /Samsung and LG — Represented AMD in developing and executing IP strategy, including transactions with global semiconductor and consumer product manufacturers, such as Samsung and LG.
• General Electric / Apple — Represented GE in monetizing codec portfolio, including negotiating licenses with industry leaders, such as Apple.
• Juul Labs, Inc. / Altria — Represented Juul in developing and executing IP strategy, including obtaining license to Altria IP portfolio.
• Represented software company in merger with national security contractor.
• Represented global financial institution in acquisition of machine learning technology.
• Represented global biotech company in acquisitions of multiple vanguard technologies, including CRISPR, machine learning, and gene therapy.
• Represented private equity client in investment in security technology company, including escrow of trade secret protected analytical procedures.

International Trade Commission

• In the Matter of Certain Vaporizer Devices, Cartridges Used Therewith, & Components Thereof (337-TA-1372) — Represented Juul Labs Inc. (JLI) in an ITC investigation defending against an assertion of patents owned by Altria’s e-cigarette subsidiary, NJOY.  After a one-week hearing in front of ALJ Johnson Hines, we obtained an initial determination finding, among other things, that JLI’s products do not infringe either of NJOY’s two asserted patents, and therefore do not violate Section 337. On March 3, 2025, the ITC Commission affirmed the ALJ’s non-infringement findings and ultimate finding of no violation. Accordingly, the ITC declined to issue an exclusion order against JLI.
• Certain Semiconductor Devices, Mobile Devices Containing the Same, & Components Thereof (337-TA-1336) — Represented patent owner Daedalus Prime in ITC investigation involving four patents related to semiconductor manufacturing processes used to make FINFET transistors. The case against Samsung was dismissed following a confidential license and settlement agreement. TSMC settled just prior to trial.
• Certain Integrated Circuits, Mobile Devices Containing the Same, & Components Thereof (337-TA-1335) — Represented Daedalus Prime against Samsung Electronics and Qualcomm Corporation in ITC investigation involving four patents related to power management techniques in computer processors. The case against Samsung was dismissed following a confidential license and settlement agreement. Evidentiary hearing involving the remaining parties was held in August 2023 and ultimately settled before a final decision on the merits.
• Certain Graphics Systems, Components Thereof, & Digital Televisions Containing the Same; Inv. (337-TA-1318) — Represented Advanced Micro Devices in an ITC investigation asserting AMD’s proprietary graphics processing unit (GPU) patents against TCL and Realtek Semiconductor. After a weeklong trial, and multiple rounds of briefing to the ALJ and the Commission, the Commission found and upheld the ALJ’s initial determination that all respondents violated Section 337, and issued a limited exclusion order against both TCL and Realtek, as well as a cease-and-desist order against TCL. The limited exclusion order blocks TCL and Realtek from importing "certain graphics systems, components thereof, and digital televisions containing the same” that infringe AMD’s proprietary graphics IP.
• Certain Video Processing Devices, Components Thereof, & Digital Smart Televisions Containing the Same (II) (337-TA-1297) — Represented DivX, a video codec company headquartered in San Diego, in enforcing patents before the ITC and in the District of Delaware against Respondent TCL. The asserted patents involve innovations relating to internet video and streaming media, and in the ITC action, Amazon has moved to participate as an Intervenor. These additional filings, in addition to the original filings, and related negotiations resulted in TCL and DivX signing an IP licensing agreement which resolved all pending litigations.
• Certain Video Processing Devices, Components Thereof, & Digital Smart Televisions Containing the Same (337-TA-1222) — Represented DivX, a video codec company headquartered in San Diego, in enforcing patents before the ITC in the District of Delaware. The asserted patents involve innovations relating to digital rights management and streaming media. LG and Samsung settled after the Markman order was issued, leaving TCL as the sole remaining respondent. Shortly after the seven-day evidentiary hearing held in July 2021, one of the two principal suppliers of the accused streaming technology to TCL, namely Roku, stepped in and took a license to DivX’s portfolio, thus partially resolving DivX’s claims against TCL. Prior to the court issuing a decision on the merits, DivX and TCL entered into a bilateral settlement agreement resolving DivX’s remaining claims against TCl and bringing an end to all pending litigation.
• Certain Semiconductor Devices, Products Containing the Same, & Components Thereof (II) (337-TA-1177) — Represented GlobalFoundries as lead counsel at the International Trade Commission and in multiple Western District of Texas actions, involving the direct and indirect infringement of four patents related to semiconductor devices, integrated circuits, and products containing the same. Additional defendants in these actions included Apple, Broadcom, Cisco, nVidia, Arista, Asus, and Lenovo. Within 2.5 months of filing at the ITC, the cases settled.
• Certain Semiconductor Devices, Integrated Circuits, & Consumer Products Containing the Same (337-TA-1149) — Mintz represented Innovative Foundry Technologies as part of a global enforcement strategy to protect five asserted patents relating to semiconductor fabrication and packaging. Respondents for the ITC matter included Taiwan Semiconductor Manufacturing Company, Qualcomm Incorporated, MediaTek, and Vizio. Cases were simultaneously filed in US District Court and internationally in Germany and China. The investigation was instituted in March 2019 and resolved prior to the conclusion of discovery in August 2019.
• Certain Graphics Systems, Components Thereof, & Consumer Products Containing the Same (337-TA-1044) — Represented Advanced Micro Devices (AMD) as complainant in the ITC asserting patents covering graphics processing technology employed by smart devices such as televisions and handsets. Respondents include LG Electronics, VIZIO, MediaTek, and Sigma Designs, Inc. (SDI). Achieved settlement with LG prior to the conclusion of expert discovery. Following the evidentiary hearing, the presiding ALJ issued an initial determination finding a violation of Section 337 and recommending the imposition of an exclusion order against the remaining Respondents’ accused products. The ITC affirmed the ALJ’s finding of a violation on August 22, 2018. As a result, the Commission issued orders banning the importation of products made by VIZIO, MediaTek, and SDI and cease and desist orders against VIZIO and SDI.
• Certain Computing or Graphics Systems, Components Thereof, & Vehicles Containing Same (337-TA-984) — Represented owner of portfolio of graphics processing and microprocessor patents, Advanced Silicon Technologies, LLC, as Complainant in an ITC investigation adverse to a number of automotive manufacturers, and infotainment system and chip suppliers. Respondents include Honda, Toyota, BMW, Audi, Volkswagen, NVIDIA, Texas Instruments, Renesas, Harman International, and Fujitsu-Ten. The investigation instituted in January 2016 and resolved favorably prior to the conclusion of expert discovery in August 2016.
• Certain Communications or Computing Devices & Components Thereof (337-TA-925) — Represented owner of portfolio of communications and computing patents from former enterprise communications business unit of large multinational innovation company, Enterprise System Technologies, S.A.R.L. An ITC investigation was instituted in August 2014 as to respondent entities Apple, Samsung Electronics, LG Electronics, and HTC Corporation. Google participated as an intervenor. The investigation resolved prior to evidentiary hearing in June 2015.
• Certain Consumer Electronics with Display & Processing Capabilities (337-TA-884) — Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC. Investigation was instituted in June 2013 and among the respondent entities were Panasonic, Toshiba, Vizio, and ZTE. Most respondents settled. After an evidentiary hearing held over several days in May 2014, on August 29, 2014 Mintz successfully obtained a recommendation for a Limited Exclusion Order against the remaining respondent, which chose to settle while Commission review of the Administrative Law Judge’s Initial Determination was pending.

District Court

• Successfully represented international software company in copyright infringement and trade secret theft defense.