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Michael T. Renaud

Member / Chair, Intellectual Property Division

[email protected]

+1.617.348.1870

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Michael is a highly regarded intellectual property litigator and patent strategist who helps clients protect and generate revenue from their patent holdings. Intellectual Asset Magazine has repeatedly recognized him in its select IAM Patent 1000 and IAM Patent Strategy 300 publications. Clients rely on his counsel regarding sensitive licensing agreement negotiations, acquisitions, and other technology transactions. He leads a team known for its ability to translate complex technology and its value to non-technical professionals — in court and business negotiations.

Michael is Division Head for the Intellectual Property Section at Mintz and serves as a member on the firm’s Policy Committee. He is an experienced litigator known for his business approach to creating value in patent assets. His success on behalf of clients comes from his ability to identify the value drivers in a portfolio and communicate that value to competitors, investors, purchasers, licensees, counsel, judges, and juries.

With a background in mechanical engineering and nearly 20 years’ experience practicing law, he has the combination of technical and legal skills essential to a strategic patent practice. He has achieved courtroom victories and negotiated favorable settlements on behalf of both patent owners and accused infringers in complex negotiations and protracted litigation.

Michael develops strategies for and guides clients through monetization programs for complex technology portfolios. Several recent monetization programs have each returned tens of millions of dollars through litigation, licensing, and sale activities.

Michael also advises clients on patent portfolio assessment and conducts IP due diligence in connection with transactions. He counsels private equity firms and venture capital funds on IP assets and patent value. He also helps patent owners develop and implement strategies for identifying and leveraging untapped assets in their patent portfolios.

He has particularly deep experience litigating Section 337 matters before the International Trade Commission (ITC) and has also achieved significant success in Federal District Courts, including the Eastern District of Texas, District of Delaware, Northern District of California, District of Massachusetts, and numerous others.

Michael’s technology experience includes electromechanical systems, digital cameras, embedded microprocessors, telecommunications and network software, cellular phones, and e-commerce, among others.

Michael rejoined Mintz from Pepper Hamilton LLP in 2012.

Education

  • University of Connecticut (JD)
  • Duke University (BS, Mechanical Engineering)

Experience

Federal Circuit Appeals

  • Preservation Wellness Technologies LLC v. NextGen Healthcare Information Systems LLC, et al, 2016-2193, 2016-2194, 2016-2195 (Fed. Cir.) - Successfully argued 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. Mintz Levin also argued on behalf of co-appellees Allscripts Healthcare Solutions Inc. and Epic Systems Corp. NextGen Healthcare provides electronic health record, financial, and health information exchange solutions for myriad healthcare organizations and the infringement allegations threatened “Patient Portal,” a key component of the company’s service.
  • Straight Path IP Group, Inc. v. Sipnet EU S.R.O, 2015-1212, (Fed. Cir.) - Represented Straight Path IP in successfully appealing to the Court of Appeals of the Federal Circuit (CAFC) the adverse result of an inter partes review handled by another firm. The IPR decision cancelled all challenged claims of Straight Path’s US Patent No. 6,108,704. In the Straight Path IP Group, Inc. v. Sipnet EU SRO appeal, the CAFC for the first time completely reversed an adverse IPR decision, remanding the matter for further proceedings under the correct construction advocated by Mintz Levin and Straight Path.

Federal District Court

  • Preservation Wellness Technologies, LLC v. NextGen Healthcare Information Systems, LLC, 2:15-cv-01562 (EDTX) – 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 CAFC and the decision was upheld.
  • Virnetx v. Mitel Networks Corp., et al. (EDTX, 6:11-cv-18) – Defended our client, the US division of a Germany-based global manufacturing concern, in a patent infringement action relating to secure network communications. Filed in January 2011, favorable settlement was achieved for our client in February 2013. Virnetx had previously scored a $368 million verdict against Apple and a $105 million verdict against Microsoft (Microsoft later settled with Virnetx for $200 million).
  • EON Corp. IP Holdings LLC v. Skyguard LLC, et al. (EDTX, 6:11-cv-15) – Represented the defendant in this multi-patent infringement case relating to vending management communication modules. Filed in June 2011, the case was settled very favorably after 18 months of litigation. EON has fairly aggressively enforced its patent rights. Among its targets have been some of the largest and most successful technology companies, including Apple, LG, Pantech, Honeywell, RIM, T-Mobile, and more. In some instances, EON has extracted high settlements from these organizations.
  • Presqriber , LLC v. Partners Healthcare System, Inc. (EDTX, 6:14cv00873) – Represented the defendant in a patent infringement lawsuit relating to interactive medications ordering software. Resulted in a favorable settlement for the client.

International Trade Commission

  • Certain Memory Modules and Components Thereof, and Products Containing Same (337-TA-1089) 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 is scheduled for November 2018.
  • 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, subject to a 60-day presidential review period.
  • Certain Computing or Graphics Systems, Components Thereof, and Vehicles Containing Same (337-TA-984) - Represented owner of portfolio of graphics processing and microprocessor patents 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. 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 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 Levin 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 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.
  • Certain Electronic Imaging Devices (337-TA-726) - Represented complainant in this 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 was fully settled in April 2011. The result was successful licensing programs with three out of four respondents, among which are recognized leaders in the electronics device manufacturing space – HTC, LG, Research in Motion, and more.

Inter Partes Reviews

  • 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.
  • Successful Defense of 12 IPRs – Three dimensional structure memory - Mintz Levin 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.

Trade Secrets Litigation

  • New England Biolabs et al v. Enzymatics, 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.
  • L3 Communications Security and Detection Systems, Inc. v. Reveal Imaging Technologies, Inc., 1:04-cv-11884 (D. Mass) – Represented Reveal, a start- up technology company in parallel trade secret and patent infringement cases concerning methods and apparatus for scanning explosives in baggage. Following extensive discovery and summary judgment hearings in the proceedings, the cases settled favorably to Reveal.

Recognition & Awards

  • Selected for the 2015 – 2018 editions of IAM Strategy 300 – The World's Leading IP Strategists
  • Identified in the IAM Patent 1000, a listing of the “World’s Leading Patent Practitioners,” as a “go-to attorney for technology patent litigation" 
  • Included on the Managing Intellectual Property: Patent star - Massachusetts list (2018)
  • Chambers USA: Massachusetts – Intellectual Property (2015 – 2017)
  • Recognized by The Legal 500 United States for Intellectual Property: Patent Litigation - International Trade Commission (2017-2018)
  • Included on the Super Lawyers Top 100 Attorneys in Massachusetts list (2016)
  • Included on the Massachusetts Super Lawyers – Intellectual Property Litigation list (2007, 2011 – 2018)

Involvement

  • International Trade Commission Trial Lawyers Association

Recent Insights

News & Press

Events

Viewpoints

Viewpoint
Read about an International Trade Commission in which a judge ruled that Apple infringed a valid Qualcomm patent, but recommended against an exclusion order for Qualcomm.
Viewpoint
On October 1, 2018, Massachusetts will become the 49th state to adopt a version of the Uniform Trade Secrets Act. The version of the UTSA that Massachusetts will adopt bears notable similarities to the Defend Trade Secrets Act, the two year old federal trade secrets statute.
A recent International Trade Commission decision, Vacuum Cleaning Devices, improves a patent owner’s ability to demonstrate that it possesses a statutorily required “domestic industry” and can therefore obtain relief from the Commission when others infringe its intellectual property. This alert reviews the Vacuum Cleaning Devices ruling, which serves to better align the statutory purpose of the ITC’s domestic industry requirement with contemporary business practices.
Patent owners have a new arrow in their quiver. The Supreme Court has held that patent owners can recover foreign lost profits for the use or sale of infringing products abroad if the products were assembled from components of the patented invention exported from the United States.
A recent order from the Northern District of California provides some succinct guidance on the relevancy of discovery concerning litigation funding. In Space Data Corp. v. Google LLC, 5-16-cv-03260, the court denied Defendants Google and Alphabet’s motion to compel discovery as to potential litigation funding allegedly considered by Plaintiff Space Data.
In a May 10, 2018 ruling, discussed earlier on this blog, Magistrate Judge Payne affirmed the jury’s willfulness finding largely on the ground that TCL did not proffer any evidence that it held a subjective, good faith belief that it did not infringe the patent-in-suit or that the patent was invalid.
On May 10, 2018, Magistrate Judge Payne reconsidered his previous March 2018 order which had vacated a jury award, and granted plaintiff Ericsson’s motion for reconsideration. The May ruling makes clear that the accused infringer bears the burden of production for royalty-stacking and other mitigatory arguments on damages.
As we noted in our blog post last week, the USPTO held its “Chat with the Chief on SAS” webinar on April 30, 2018, to advise the public on the implications of the Supreme Court’s opinion in SAS Institute for practice before the Board going forward.
On Tuesday, the U.S. Supreme Court issued two important patent law opinions that relate to the inter partes review procedure introduced by the America Invents Act: Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, which upholds the constitutionality of inter partes review, and SAS Institute, Inc. v. Iancu, which requires the Patent Trial and Appeal Board to adjudicate the validity all patent claims challenged in a petition for inter partes review if the Board decides to adjudicate the validity of any claim challenged in that petition.
Led by Michael Renaud, Jim Wodarski, Mike McNamara, Bill Meunier, Aarti Shah, and Adam Rizk, the Mintz team secured an important victory for its client Advanced Micro Devices (AMD) at the U.S. International Trade Commission (ITC). The case was filed against LG, VIZIO, MediaTek, and Sigma Designs, and it involved complex graphics circuit technology.

News & Press

This column notes that with the legal landscape surrounding SEPs shifting in many countries, it has never been more important to take a global view of patent assertion – but any cross-border litigation strategy needs careful consideration. A team of Mintz intellectual property attorneys including Members Mike Renaud and Jim Wodarski and Associate Rob Moore authored this column.
Member and Chair of the Intellectual Property Division Mike Renaud provides commentary in this feature article. The piece is part of Law360’s ongoing series highlighting important patent venues. Mike and other IP leaders discuss Germany as an area of focus for IP litigation in Europe.
This feature article includes commentary from leading intellectual property industry sources to discuss how the standard-essential patents (SEPs) landscape has changed throughout recent years. Members Mike Renaud and Jim Wodarski are quoted among the IP insiders providing insight.
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.
Mintz Members and intellectual property attorneys Mike Renaud, Aarti Shah and Jim Wodarski collaborated on an article published by Financier Worldwide Magazine discussing standard-essential patents.
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.
The Legal 500 United States has recognized Mintz as a leading firm in the 2017 edition. The annual editorial guide has also recognized Mintz attorneys as leaders in their areas of practice.
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.
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. 
The U.S. International Trade Commission (ITC) has announced it's launching an investigation into whether thermoplastic parts used in certain BMW, Honda, and Toyota vehicle models have infringed five patents owned by Intellectual Ventures LLC.
This Boston Business Journal feature article highlights Mintz’s intellectual property team in Boston. The piece notes that while other law firms move away from patent prosecution work, Mintz has continued to excel in that area and expand the team as well.
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.
This piece, co-authored by Mike Renaud and Sandra Badin, discusses two notable decisions by the Federal Circuit and the ITC that impact standard essential patents and shape the incentives of technology innovators.
Mintz attorneys Michael Renaud, Robert Kidwell, and Robert Moore discuss the FTC’s suit against Qualcomm in the U. S. District Court for the Northern District of California as well as the timing of the lawsuit and specifics of the FTC’s complaints against said company. 
A team of Mintz attorneys author this column discussing the Korean Fair Trade Commission’s steep fine against Qualcomm for antitrust violations and the continued antitrust concerns raised by Qualcomm’s licensing practices.
Mintz has bolstered its nationally recognized, bicoastal Intellectual Property Practice with the addition of veteran Silicon Valley attorney Stephen J. Akerley, who will serve as a Member in the San Francisco office.
Division Head of the firm’s IP Section Michael Renaud and Special Counsel Sandra Badin authored this Massachusetts Lawyers Journal column on the recent decisions to opt out of standards-setting patent policy introduced by the Institute of Electrical and Electronics Engineers’ (IEEE).
Michael T. Renaud, Division Head for Mintz's Intellectual Property Section, is speaking on a panel at the 2016 IP Dealmakers Forum. The event is taking place November 17 at the Apella Event Space at Alexandria Center in New York City.
IP Division Head Michael Renaud, Member Aarti Shah, and Associate Adam Rizk authored this Financier Worldwide article discussing the ITC's statement that it will treat standard-essential patents the same way it treats all other patents asserted in a Section 337 investigation.
IP Division Head Michael Renaud and Associate Nick Armington authored this Bloomberg BNA Daily Labor Report column examining the protections and provisions brought about by the DTSA and how employers can fully leverage it to combat trade secret theft.
IP Division Head Michael Renaud and Associate Nick Armington authored this Bloomberg BNA Daily Labor Report column that examines the DTSA and how employers can fully leverage it to combat trade secret theft.
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. 
Mintz Boston Members Michael Renaud and James Wodarski, Washington, D.C. Member Aarti Shah, and Boston Associate Adam Rizk authored this Law360 article on the newly-issued ITC statement discounting the idea that an SEP patent owner cannot bring infringement cases before the commission.
Mintz Members Michael Renaud and James Wodarski and Sandra Badin, Special Counsel and Appellate attorney, authored an Intellectual Asset Magazine column on how U.S. owners of standard-essential patents must be creative in their strategizing to protect the value of their rights.
This Law360 feature article notes Honda’s removal from the U.S. International Trade Commission’s investigation into several foreign automakers’ “importation of vehicles with infotainment systems that allegedly infringed several patents.”
Firm’s National Healthcare Practice, NY Corporate/M&A and Litigation: General Commercial Among Newest Rankings
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.
The 2015 Chambers USA: America's Leading Lawyers for Business guide names 52 Mintz, Cohn, Ferris, Glovsky and Popeo, P.C.  attorneys as “Leaders in Their Fields.”

Events

Moderator
Nov
7
2018

5th Annual IP Dealmakers Forum

The IP Investment Institute, LLC

New York, NY

Moderator
Sep
18
2018

Patent Licensing 2018

IAM

Golden Gate Club - The Presidio 135 Fisher Loop San Francisco, CA

Moderator
Nov
16
2017

IP Dealmakers Forum

The IP Investment Institute, LLC

New York, NY

Moderator
Sep
20
2017

Patent Licensing 2017

Intellectual Asset Management (IAM)

San Francisco, CA

Panelist
Nov
17
2016

2016 IP Dealmakers Forum

IP Dealmakers

Apella Event Space New York, NY

Speaker
Mar
22
2016

NPE 2016: The Business of Responsible Licensing

Intellectual Asset Management (IAM)

New York City

Moderator
Dec
7
2015

2015 IP Dealmakers Forum

The Apella, New York City