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Michael C. Newman

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+1.617.348.1626

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Michael represents companies in complex intellectual property disputes, with a particular focus on Section 337 investigations before the US International Trade Commission (ITC). His experience spans from pre-litigation investigation and litigation to appeals before the Court of Appeals for the Federal Circuit. In addition, Michael has had extraordinary success representing patent owners in inter partes review proceedings before the Patent Trial and Appeals Board (PTAB).  Michael represents a broad range of clients in cases involving such diverse technologies as integrated circuits, light-emitting diodes (LEDs), carbohydrate chemistry, smartphones, video compression, semiconductor fabrication and packaging, gene expression, microprocessors (CPUs and GPUs), digital signal processors, RDIMM and LRDIMM memory modules, networking equipment, cellular communications, voice over internet protocol (VoIP), genetically engineered bacteria, medical devices, and information systems.

Michael's practice is focused on his work with the US International Trade Commission (USITC). His cases in federal courts also include patents, trade secrets, and other intellectual property matters. The areas of technology in which Michael has particular experience include biochemistry, biotechnology, chemistry, computer software, mechanical devices, medical devices, semiconductors, and converged devices.

Before joining Mintz, Michael worked with the law firms Pepper Hamilton LLP and Fish & Richardson PC. He has also worked as a software engineer and has conducted biochemical research at Harvard Medical School.

Michael represents companies in complex intellectual property disputes, with a particular focus on Section 337 investigations before the US International Trade Commission (ITC). His experience spans from pre-litigation investigation and litigation to appeals before the Court of Appeals for the Federal Circuit. In addition, Michael has had extraordinary success representing patent owners in inter partes review proceedings before the Patent Trial and Appeals Board (PTAB).  Michael represents a broad range of clients in cases involving such diverse technologies as integrated circuits, light-emitting diodes (LEDs), carbohydrate chemistry, smartphones, video compression, semiconductor fabrication and packaging, gene expression, microprocessors (CPUs and GPUs), digital signal processors, RDIMM and LRDIMM memory modules, networking equipment, cellular communications, voice over internet protocol (VoIP), genetically engineered bacteria, medical devices, and information systems.

Experience

Federal District Court

  • Nanoco Technologies Ltd. v. Samsung Electronics Co., Ltd. et al (E.D. Tex, 2:20-cv-00038) – Led the Mintz team representing British nanotechnology company Nanoco Technologies, Ltd., a world leader in the development and manufacture of cadmium-free quantum dots and other nanomaterials, in a patent infringement case involving the synthesis of quantum dots, and use of quantum dot film resins in electronic display devices. The Mintz team also represented Nanoco in corresponding IPR proceedings before the United States Patent and Trademark Office. The firm secured a $150 million settlement for the client, which put an end to all global litigation between Nanoco and Samsung.
  • 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.

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.
  • 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.

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.
  • 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
  • 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.

Pro Bono

  • Represented Ugandan client pro bono in application for political asylum in the United States. Client granted political asylum
  • Represented Tibetan client pro bono through removal proceedings in immigration court. Client granted political asylum
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viewpoints

On August 24, 2023, the U.S. Court of Appeals for the Federal Circuit, in Volvo Penta of the Ams. LLC v. Brunswick Corp., Case No. 22-1765, vacated a Final Written Decision of the Patent Trial and Appeal Board (PTAB) holding all claims of U.S. Patent 9,630,692 (the “’962 patent”) unpatentable as obvious.

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In our penultimate patent owner tip for surviving an instituted IPR, we turn our discussion to defending the deposition of your expert. At this stage of the proceeding, your Patent Owner Response has been filed, and all the facts and arguments you need have already been developed, including any necessary expert testimony.
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After an inter partes review (“IPR”) is instituted, a patent owner has an opportunity to file a motion to amend the claims and thereby propose a reasonable number of substitute claims. Here we provide some instances where a motion to amend may be a favorable option for a patent owner to consider. 
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. 
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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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If you are a patent owner facing an inter partes review (“IPR”) or other post-grant review at the Patent Trial and Appeal Board (“PTAB”), your best chance of success is to convince the PTAB not to institute a trial.  But that does not mean that you should pack all of your substantive arguments about patentability into your preliminary response.
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Venue selection is a critical component to any patent enforcement strategy, even before the inception of the PTAB as we know it today.  Venue now has even greater importance, as the speed of your patent case (i.e. time to trial) and stay statistics will have a direct impact on whether IPRs against your patents will institute in light of the Fintiv factors.
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On Monday, in Thryv, Inc. v. Click-to-Cal Technologies, the Supreme Court held that § 315(b) time-bar determinations are not subject to judicial review. In this 7-2 decision penned by Justice Ginsburg, with Justices Gorsuch and Sotomayor dissenting, the Court determined that time-bar determinations are unreviewable because they are “closely tied” to the Director’s decision to institute an inter partes review (IPR).
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This week the en banc Federal Circuit declined to revisit a panel ruling that found the appointment of Administrative Patent Judges (“APJs”) of the Patent Trial and Appeal Board (“PTAB”) violates the Appointments Clause of the Constitution.  This decision is notable for at least two reasons. First, it declined to review or disturb the panel’s conclusion and its remedy—vacatur and remand of PTAB decisions made by unconstitutionally appointed APJs. Second, four of the Federal Circuit judges dissented, disagreeing with the panel’s finding and saying that its corresponding remedy improperly rewrites the statute contrary to Congressional intent.
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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.
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News & Press

Press Release Thumbnail Mintz

Mintz is pleased to announce that Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members Matthew GalicaFrank GerratanaMarguerite McConiheMichael NewmanAdam Rizk, and James Wodarski have been named to the 2024 IAM Strategy 300: The World’s Leading IP Strategists list.

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BOSTON – Nine Intellectual Property attorneys from Mintz have been recognized in the 2024 edition of the Intellectual Asset Management (IAM) Strategy 300 Global Leaders Guide.

Press Release Thumbnail Mintz

Mintz is pleased to announce that Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members Matthew GalicaFrank GerratanaMarguerite McConiheMichael NewmanAdam RizkAdam SamanskyDaniel Weinger, and James Wodarski have been named to the 2023 IAM Strategy 300: The World’s Leading IP Strategists list.

Press Release Thumbnail Mintz

Mintz has secured a significant and complete defense verdict for client Princeton CarbonWorks, Inc. in the U.S. District Court for the Southern District of Florida. The Connecticut-based bicycle wheel maker was accused of infringing two patents by competitor and industry giant SRAM, LLC.

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Mintz secured a $150 million settlement for Nanoco Group plc in the company’s patent infringement litigation against Samsung Electronics Co. Ltd. and Samsung Electronics America Inc. Mintz Member Michael Newman led a team that represented the maker of cadmium-free quantum dots and other nanomaterials in a federal district court in Texas and before the US Patent and Trademark Office.

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BOSTON-  Six attorneys from Mintz have been recognized in the 2023 edition of the Intellectual Asset Management (IAM) Strategy 300 Global Leaders Guide.

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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.
An article published by Law360 reported that following the U.S. International Trade Commission’s initial decision that Jennewein Biotechnologie GmbH’s imports infringe a Glycosyn LLC patent on human milk oligosaccharides, the Patent Trial and Appeal Board denied Jennewein’s petition for post-grant review of a related patent.

The Mintz team representing Glycosyn at the ITC includes Michael Newman, Thomas Wintner, Michael Renaud and James Wodarski; and the Mintz team representing Glycosyn at the PTAB includes Michael Newman, Thomas Wintner, Peter Cuomo and Daniel Weinger.
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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.
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A team of Mintz Levin attorneys has successfully defended two separate Inter Partes Reviews (IPRs) challenging the validity Infobridge PTE LTD.’s U.S. Patent No. 8,917,772 (“’772 Patent”).
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This article notes that the Patent Trial and Appeal Board (PTAB) has denied Samsung’s request to challenge a patent it has been accused of infringing – resulting in a final win in a series of victories for Mintz client, Elm 3DS Innovations.
A team of Mintz attorneys has successfully defended 105 of 107 patent claims across 14 instituted Inter Partes Reviews in a series of decisive wins for client Elm 3DS Innovations, LLC.
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The U.S. Court of Appeals for the Federal Circuit found decisively in favor of Mint and client Straight Path IP Group, Inc. in a long-fought battle over three of the licensing firm’s patents. The court upheld a prior 2016 decision by the Patent Trial and Appeal Board.
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Mintz attorneys have saved sixty-three of sixty-five challenged patent claims across eight patents in a series of sweeping Inter Partes Review victories for their client, Elm 3DS Innovations, LLC, victories that may pave the way to Elm prevailing in other pending invalidity challenges. 
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Mintz IP attorneys Michael Renaud, Michael Newman, James Wodarski, and Sandra Badin are among industry sources in this article assessing a Texas ruling that "asserted claims of patent covering medical technology are invalid as abstract and not inventive" under Alice Corp v. CLS Bank International. 
Mintz announced a victory before the U.S. Court of Appeals for the Federal Circuit. The court affirmed an Eastern District of Texas ruling from May 2016 that held unpatentable a medical records patent asserted by Preservation Wellness against NextGen Healthcare.
Fifty-three Mintz attorneys have been named Massachusetts Super Lawyers for 2016 and thirty-one have been named Massachusetts Rising Stars. The findings will be published in the November 2016 issue of Boston Magazine and in a stand-alone magazine, New England Super Lawyers. 
This article notes that the Patent Trial and Appeal Board (PTAB) upheld claims in a Straight Path IP Group patent matter. The coverage notes that the decision follows a rare reversal by the Federal Circuit that found the PTAB used an incorrect claim construction previously.
This article notes that the Patent Trial and Appeal Board has upheld the validity of two Straight Path patents in Samsung Electronics Co. Ltd.’s review.
Mintz Members Bill Meunier and Mike Newman are mentioned in this Law360 article on a challenge to the Federal Circuit’s revival of a Straight Path IP Group patent brought to the Patent Trial and Appeals Board by LG, Hulu, and others.
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Events & Speaking

Speaker
Sep
29
2015

IP Law Committee: Patent Reform Litigation

Massachusetts Chapter of the Federal Bar Association

Boston, MA

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Michael represents companies in complex intellectual property disputes, with a particular focus on Section 337 investigations before the US International Trade Commission (ITC). His experience spans from pre-litigation investigation and litigation to appeals before the Court of Appeals for the Federal Circuit. In addition, Michael has had extraordinary success representing patent owners in inter partes review proceedings before the Patent Trial and Appeals Board (PTAB).  Michael represents a broad range of clients in cases involving such diverse technologies as integrated circuits, light-emitting diodes (LEDs), carbohydrate chemistry, smartphones, video compression, semiconductor fabrication and packaging, gene expression, microprocessors (CPUs and GPUs), digital signal processors, RDIMM and LRDIMM memory modules, networking equipment, cellular communications, voice over internet protocol (VoIP), genetically engineered bacteria, medical devices, and information systems.

Recognition & Awards

  • IAM Strategy 300: The World's Leading IP Strategists (2022 - 2024)

  • IAM Strategy 300: Global Leaders (2023 - 2024)

  • Recognized by The Legal 500 United States for Intellectual Property: Patent Litigation - International Trade Commission (2018)

  • Included on the Massachusetts Super Lawyers: Rising Star – Intellectual Property Litigation list (2013 - 2016)

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