Michael C. Newman

International Trade Commission

• Certain Flocked Swabs, Products Containing Flocked Swabs, And Methods of Using Same (337-TA-1279) - Representing Copan Italia and Copan Industries as complainants in the International Trade Commission, asserting patent infringement claims against global competitors in a case involving the use of flocking technology (common in the textile industry) in the production of biological specimen collection swabs. Evidentiary hearing is scheduled for June 2022.
• 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.
• Certain Graphics Systems, Components Thereof, and 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 Memory Modules and Components Thereof, and Products Containing Same (337-TA-1023) - Represent Complainant Netlist, Inc., a California memory module company, in the ITC asserting six patents against the Korean-based memory giant SK hynix. The technology claimed by the asserted patents is essential to the JEDEC DDR4 RDIMM and LRDIMM standards, which are implemented by the accused imported products. The respondents are asserting novel RAND defenses in the ITC, and in a co-pending case involving the same patents in the District Court for the Central District of California. The ITC evidentiary hearing was held May 2017, while the trial in the CDCA is scheduled for July of 2018.
• Certain Computing or Graphics Systems, Components Thereof, and 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 of 2016 and resolved favorably prior to the conclusion of expert discovery in August of 2016.
• Certain Communications or Computing Devices and 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 of 2015.
• Certain Point-to-Point Network Communication Devices and Products Containing Same (337-TA-892) - Representing complainant in 3-patent litigation involving streaming media technology at the International Trade Commission and in parallel case in the Eastern District of Texas. Respondents/defendants include some of the most recognized global electronics manufacturers, a number of which have settled resulting in the closing of the ITC case.
• Certain Consumer Electronics with Display and 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.
• Certain Consumer Electronics and Display Devices and Products Containing Same (337-TA-836) - Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC, and as plaintiff in multiple parallel District of Delaware cases. Cases were filed between late 2011 and early 2012, and all were resolved by the end of January 2013. The technology at issue relates to LCD panels, central processor units, graphics processing units, and other microprocessor technology. Successfully licensed all respondents, including some of the largest and most recognized names in the converged device space – Apple, LG, Research in Motion, Samsung, and Sony.
• Certain Portable Communication Devices (337-TA-827) - Represented complainant in the ITC and as plaintiff in multiple parallel District of Delaware cases. Successfully licensed all respondents, including some of the largest and most recognized names in the converged device space – Amazon, LG, Motorola, Pantech Wireless, Research in Motion, Sony, and more. Cases were filed in December 2011 and settled in May 2012.
• Certain Electronic Imaging Devices (337-TA-726) – Represented complainant in three-patent ITC case. Filed in June 2010 against converged device manufacturers and focused on digital camera technology found in cell phones, laptop computers, and personal digital assistants, the matter went to trial in April 2011. The result was successful licenses with three out of four respondents, including recognized leaders in the electronics device manufacturing space.
• Certain LED Photographic Lighting Devices and Components Thereof (337-TA-804) – Represented the complainant (plaintiff) that makes LED lighting systems for use in film and TV production, at the International Trade Commission. The ITC handed down its Final Initial Determination of infringement on September 7, 2012. On January 17, 2013, the ITC issued a General Exclusion Order (GEO) against respondents based in both China and the United States. The result in this case is particularly notable because it is rare for the ITC to issue a GEO due to the rigorous criteria and careful balancing of interests that apply to requests for GEOs.

Federal Circuit Appeals

• Samsung Electronics Co., Ltd., Micron Technology, Inc., SK Hynix Inc. v. Elm 3DS Innovations, LLC (Fed. Cir. 2019) – Represented appellee Elm 3DS Innovations at the Court of Appeals for the Federal Circuit in defending favorable final written decisions entered by the Patent Trial and Appeal Board (PTAB) in thirteen inter partes reviews.
• 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.
• Preservation Wellness Technologies LLC v. NextGen Healthcare Information Systems LLC, et al (Fed. Cir. 2017) – Represented appellee NextGen Healthcare Information Systems LLC at the Court of Appeals for the Federal Circuit to affirm an Eastern District of Texas ruling from May 2016 that held unpatentable a medical records patent asserted by Preservation Wellness against long-time client NextGen Healthcare.

Federal District Court

• Nanoco Technologies Ltd. v. Samsung Electronics Co., Ltd. et al (E.D. Tex, 2:20-cv-00038) – Representing Nanoco Technologies, Ltd. v. Samsung Electronics Co., Ltd. et al in a patent infringement case involving the synthesis of quantum dots, and use of quantum dot film resins in electronic display devices. Jury selection is scheduled for October 4, 2021.
• 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.
• Preservation Wellness Technologies LLC v. NextGen Healthcare Information Systems LLC (E.D. Tex., 2:15-cv-01562) – U.S. Federal Circuit Judge William Bryson presided over the case, granting Mintz client NextGen’s motion to dismiss after oral argument in April 2017. Judge Bryson held that Preservation Wellness’ patent at issue covers nothing more than the basic concept of a medical records system, which he said is not patent-eligible under the U.S. Supreme Court’s Alice decision. Mintz represented NextGen on the appeal at the Court of Appeals for the Federal Circuit and the decision was upheld.
• New England Biolabs, et al. v. Enzymatics, Inc., 1:12-cv-12125 (D.Mass) – Defended Enzymatics against claims of trade secrets theft and patent infringement brought by three plaintiffs in a case involving nucleic acid ligands. Resulted in favorable settlement for our client.
• Velcro Industries B.V. and Velcro USA, Inc. v. Taiwan Paiho Limited and Radio Shack Corporation (DDE, 1:08-cv-00548) – Represented Velcro in patent litigation involving hook and loop fasteners. Case settled.
• GE Homeland Protection Inc. v. DSA Detection LLC et. al. (D. Mass, 1:06-cv-11962) – Represented defendants in trade secrets and patent litigation relating to consumables for trace detection instruments, such as ion mobility spectrometers. Case settled.
• Tate & Lyle Sucralose Inc v. Hebei Sukerui Science and Technology Co., Ltd., et al. (C.D. Ill., 2:06-cv-02102) – Represented group of defendants in patent litigation involving a process for making sucralose. Plaintiff voluntarily dismissed its complaint after defendants filed motions to dismiss for lack of standing and lack of jurisdiction.
• Velcro Industries B.V. et al v. Taiwan Paiho Limited, et al. (D.N.H., 1:04-cv-00242) – Represented Velcro in patent litigation involving hook and loop fasteners. Won key claim construction on all disputed claim terms. Case settled on the eve of trial.
• Insight Technology Incorporated v. Surefire, LLC (D.N.H., 1:04-cv-00074) – Represented tactical light manufacturer asserting patent for attaching auxiliary devices to weapons against competitor SureFire LLC. Case settled.
• Insight Technology v. Glock, G.M.B.H., et al. (D.N.H., 1:03-cv-000253) – Represented tactical light manufacturer asserting patent for attaching auxiliary devices to weapons against major handgun manufacturer Glock GmbH. Case settled.

Inter Partes Review

• Represented patent owner, Glycosyn LLC, in a post grant review of claims 1-28 of US Patent 9,970,018 relating to the methods for producing purified milk oligosaccharides. PTAB denied institution of the petition in September 2019. PGR2019-00023

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
• 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 13 of the proceedings were received in June and August 2017 and confirmed validity of all but two challenged claims. PTAB's determination was upheld on appeal to the Federal Circuit.
• Defense of Multiple IPRs – Point-to-Point Communication Over Computer Networks – Currently representing Straight Path IP Group in the defense of seventeen inter partes reviews filed against three U.S. patents concerning technology for facilitating point-to-point communications over computer networks. Petitioners include Samsung Electronics Co., Ltd.; Cisco Systems, Inc.; Avaya Inc.; LG Electronics, Inc.; Toshiba Corp.; VIZIO, Inc.; Verizon Communications, Inc.; and Hulu, LLC.