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Michael C. Newman

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[email protected]

+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.

Education

  • University of Virginia (JD)
  • Saint Anselm College (BA, Biochemistry)

Experience

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

Recognition & Awards

  • 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)

Recent Insights

News & Press

Viewpoints

In its first en banc decision of 2018, the Federal Circuit held that “judicial review is available for a patent owner to challenge the U.S. Patent and Trademark Office’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review.”
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AQUA PRODUCTS: The Federal Circuit Shifts The Burden of Proof On Amending Claims During An IPR From The Patent Owner To The Petitioner

October 5, 2017 | Blog | By Michael Renaud, William Meunier, Michael Newman, Matthew Galica

The United States Court of Appeals for the Federal Circuit’s recent decision in Aqua Products Inc., v. Matal materially changes the burden of proof associated with the patentability of amended claims during an inter partes review (“IPR”), shifting the burden from the Patent Owner seeking the amendment to the IPR Petitioner opposing it.
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New Rules in the Northern District of California Aim to Encourage Patent Case Settlements

February 8, 2017 | Blog | By Michael Newman, Marguerite McConihe

New rules for patent cases in the Northern District of California will significantly affect litigation and settlement of cases in Silicon Valley’s backyard. Lawyers litigating cases in the district after the January 17, 2017 change should be wary of the new requirements that set the Northern District of California apart.
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In McRO, Federal Circuit Provides Further Guidance on Section 101

September 22, 2016 | Blog | By Michael Renaud, Michael Newman, Matthew Karambelas

Two years after the Central District of California invalidated two 3-D animation patents under Section 101, the Federal Circuit reversed that court’s decision, finding that the lower court oversimplified the claims of a computer-related invention.
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Markman at the ITC and Its Effect on an Investigation

September 20, 2016 | Blog | By Michael Renaud, Michael Newman

Several months ago, we were struck with the question of whether, as counsel for a patent owner at the ITC, our clients’ case would benefit from a Markman hearing. Claim construction during an ITC investigation was routinely performed as part of the evidentiary hearing in an investigation, rather than as part of earlier Markman proceedings.
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Think you’ve won on validity at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) and your claims are safe on appeal? “Not so fast,” says the Federal Circuit in Software Rights Archive, LLC v. Facebook Inc., Nos. 2015-1649 through 2015-1563 (Fed. Cir., Sep. 9, 2016) (nonprecedential) (per curiam).
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On December 17, 2015, Judge Rodney Gilstrap of the Eastern District of Texas (EDTX) ruled that, in light of Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) (“Alice”), a plaintiff’s position on the validity of the patent-in-suit under § 101 was “objectively unreasonable” and that the harm to the defendants was compounded by the plaintiff  litigating in “an unreasonable manner[,]” meriting an award of attorneys’ fees under 35 U.S.C. § 285. eDekka LLC v. 3balls.com, Inc.et al., C.A. Nos. 2:15-cv-541 and 2:15-cv-585 (Dec. 17, 2015).
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2015 was a busy year for post-grant review appeals at the Federal Circuit and produced notable opinions in the areas of claim construction, IPR procedural issues, and the constitutionality of IPRs in general. In 2015, the Federal Circuit reversed the Board’s claim construction in an IPR for the first time, and found that IPRs do not violate Article III and the Seventh Amendment of the Constitution.
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On Monday, in the latest episode of the smartphone wars, Samsung filed a petition for certiorari with the Supreme Court. Samsung is appealing a Federal Circuit decision that upheld a $399 million judgment against Samsung for infringing three of Apple’s design patents.
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Mintz Convinces The Federal Circuit To Completely Reverse And Remand An Adverse IPR Final Written Decision For The First Time

November 30, 2015 | Blog | By Michael Renaud, William Meunier, Michael Newman, Nick Armington

Mintz has won extraordinary relief for its client, Straight Path IP Group, Inc., convincing the Federal Circuit to completely reverse and remand an IPR final written decision adverse to a patent owner for the first time.
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News & Press

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.

Events

Speaker
Sep
29
2015

IP Law Committee: Patent Reform Litigation

Massachusetts Chapter of the Federal Bar Association

Boston, MA