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Michael J. McNamara

Federal District Court

  • Parus Holdings Inc. v. Apple, Inc. et al, 6:19-cv-00432, -00433, -00438, -00437, -00454 (W.D.Tex.)- Represent plaintiff in a patent infringement case involving robust voice browser system and voice activated device controller.
  • Innovative Foundry Technologies LLC v. Semiconductor Manufacturing International Corporation, et al., 6:19-cv-00719 (W.D. Tex) - Represented Plaintiff in enforcing 4 patents related to semiconductor manufacturing technology. The case proceeded through Markman hearing where claims were construed favorably in all four patents and a “not invalid” determination issue in response to an attempt to invalidate one patent entirely. All claims between IFT and SMIC have been confidentially settled.
  • Represented Advanced Micro Devices in multiple federal district cases running parallel with a complaint filed in the ITC. The patented technology covers graphics processing technology employed by smart devices such as televisions and handsets. Defendants included LG, VIZIO, MediaTek, and Sigma Designs. LG settled and the remaining defendants has Limited Exclusion Orders and Cease & Desist letters issued by the ITC in August 2018.
  • Vtrax Technologies Licensing, Inc. v. Siemens Communications, Inc., et al (S.D. Fl.- 9:10-cv-80369) – Successfully defended our client, the US division of a Germany-based global manufacturing concern, an insurance carrier and a large national bank, in a patent infringement action relating to unified communications and related technologies. Case filed in March 2010 against various enterprise systems, obtained dismissal of case for our clients in June 2011.
  • Cisco Systems, Inc. v. Teles AG (D. Del.– 1:09cv224) - Represented Cisco Systems, Inc. in multiple cases and reexaminations concerning VoIP patents; won summary judgment
  • Mayfair Wireless, LLC v. Cisco Systems, Inc.( D. Del – 1:10cv1102) - Represented a defendant in a dispute involving telephony; won motion to dismiss for lack of standing
  • JDSU Corporation and Emcore Corp. v. Optium Corp., now Finisar Corp. (W. D. Pa. – 2:07cv326) - Overall responsibility for management of a patent dispute involving optic transmission equipment; case went to trial and is currently subject to arbitration
  • Consumers Interstate Corporation v. W.B. Mason Co., Inc. (D. Conn. –3:06cv174) – Overall responsibility for management of a patent dispute involving web technology
  • Freedom Wireless, Inc. v. AT&T, Alltel Wireless, Inc., Cricket Comm. Inc. (E. D. Tex. –2:06cv504) - Represented the plaintiff in a patent dispute involving prepaid wireless technology

International Trade Commission

  • Certain Video Processing Devices, Components Thereof, and 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, and Components Thereof (II) (337-TA-1177) - Represented GlobalFoundries 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 on favorable terms.
  • 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 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.
Acquisition & Monetization of Semiconductor Fabrication and Packaging Patents Case Study
Mintz was hired to acquire and monetize patents from GlobalFoundries. After deploying IP mining and asset identification techniques to identify and negotiate the acquisition of 120 world-class patents, Mintz created and drove a successful licensing revenue program.
ITC Issues LEOs and C&D Letters, Excluding Smart TVs from the US Case Study
Mintz represents Advanced Micro Devices in enforcing its patent rights related to novel architectures for GPU circuitry. The ITC handed down a decision that VIZIO, MediaTek and Sigma Designs violated Section 337 of the Tariff Act and recommended certain products be excluded from import to the US.
Acquisition and Monetization of Wireless Portfolio Case Study
Mintz helped the Gores Group, a private equity firm, acquire and then monetize a wireless infrastructure portfolio from Powerwave Technologies, which was in bankruptcy. The sale closed less than 15 months after diligence began and returned substantial value for the client.
Monetization of Telephony Portfolio Through ITC Case Study
Mintz helped Enterprise Systems Technologies monetize a portfolio of more than 500 patents focused on enterprise telephony developed by Siemens AG. Mintz attorneys enforced four of the patents against integrated device companies. EST settled with Apple, Samsung, LG, and Google on favorable terms.
Licensing Revenue Success for AST in Multi-Prong Program Case Study
Mintz helped patent licensing company Advanced Silicon Technologies (AST) monetize 3D video graphics processing and intelligent memory control patents. Mintz asserted four patents for AST against manufacturers in the International Trade Commission (ITC), district court, and European venues.