Michael is recognized as one of the World’s Leading IP Strategists by Intellectual Asset Magazine, appearing in its 2021 inaugural edition of the Strategy 300 Global Leaders guide and repeatedly appearing in its annual IAM Strategy 300 publication. He is an experienced litigator and the central tactician in developing and implementing multinational enforcement, licensing, and litigation strategies for global corporations. Michael and his teams help clients realize significant value by identifying patent assets which can be enforced to protect clients’ competitive positions and generate licensing revenue. He also represents clients accused of infringement, and his success in these matters is informed by his full understanding of how plaintiff cases are developed and, in turn, how to strategically attack them.
As firmwide Chair of the Intellectual Property Division, Michael leads an international team of IP prosecutors, litigators, and transaction specialists. As an engineer with 20 years’ experience in intellectual property, Michael achieves success both in and out of the courtroom stemming from his uncommon combination of sound legal judgment, strong business acumen, and experience with and sensitivity to changing market conditions. Michael is driven to help his clients attain their business objectives and has years of experience evaluating and valuing diverse patent portfolios. His cutting edge work on SEP valuation and enforcement is supported by his unmatched ability to identify untapped assets and value drivers.
Clients rely on Michael to develop multinational strategies tailored to their specific needs. He is known for his experience with developing comprehensive monetization strategies; conducting IP due diligence; counseling investment firms on implementing strategies for leveraging patent value; negotiating deals and generating revenue through strategic partnerships; and prosecuting coordinated international enforcement actions.
Most successful enforcement and licensing efforts today require an attorney like Michael who can manage parallel litigations in U.S. Federal District Courts, in front of the U.S. International Trade Commission, and in global jurisdictions including China, Europe, and the UK. Recent successful Mintz-coordinated global efforts have involved regional IP courts in Shanghai, China, and in Dusseldorf and Mannheim, Germany, in addition to multiple U.S. venues.
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.
According to a client interviewed by IAM Patent 1000 editors, “Mike is extremely good at developing cases, budgeting appropriately and assessing the scope and shape of the risk confronting his clients. Plenty of lawyers have the technical ability to handle complex patent matters, but Mike has a special understanding of and sensitivity to business issues that sets him apart.”
Education
- University of Connecticut (JD)
- Duke University (BS, Mechanical Engineering)
Experience
International Trade Commission
- Certain Digital Video-Capable Devices and Components Thereof (337-TA-1224) – Representing Koninklijke Philips N.V. and Philips North America LLC as Complainants before the ITC, and in District of Delaware and Central District of California actions. The asserted patents claim foundational content-protection technology widely implemented in, for example, ultra-high definition digital video-capable devices using the HDCP 2.2. standard, such as computers, displays, and televisions. ITC evidentiary hearing was held in July 2021.
- 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 Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (337-TA-1222) – Representing DivX, a video codec company headquartered in San Diego, in enforcing patents before the ITC, in the District of Delaware and Eastern District of Texas, and in German and Brazilian courts. The asserted patents involve innovations relating to internet video and streaming media. LG and Samsung settled prior to the ITC evidentiary hearing which was held with remaining respondents in July 2021.
- Certain Semiconductor Devices, Products Containing the Same, and Components Thereof (II) (337-TA-1177) - Represented GlobalFoundries as lead counsel 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 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 Semiconductor Devices, Integrated Circuits, and Consumer Products Containing the Same (337-TA-1149) – Mintz represented Innovative Foundry Technologies as part of a global enforcement strategy to protect 5 asserted patents relating to semiconductor fabrication and packaging. Respondents for the ITC matter included Taiwan Semiconductor Manufacturing Company, Qualcomm Incorporated, MediaTek, and Vizio. Cases were simultaneously filed in U.S. District Court and internationally in Germany and China. The investigation was instituted in March of 2019 and resolved favorably prior to the conclusion of discovery in August of 2019.
- 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 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 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.
- 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.
Federal Circuit Appeals
- Samsung Electronics Co., Ltd., Micron Technology, Inc., SK Hynix Inc. v. Elm 3DS Innovations, LLC, 2017-2474, 2017-2475, 2017-2476, 2017-2478, 2017-2479, 2017-2480, 2017-2482, 2017-2483, 2018-1050, 2018-1079, 2018-1080, 2018-1081, 2018-1082 (Fed. Cir.) – Successfully represented Elm 3DS Innovations in defending the appeal of highly favorable final written decisions entered by the Patent Trial and Appeal Board (PTAB) in thirteen inter partes reviews. PTAB held that petitioners did not establish the unpatentability of 105 claims across eleven patents, and the Federal Circuit affirmed the PTAB’s decisions.
- 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 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 canceled 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 and Straight Path.
Federal District Court
- 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, 2:15-cv-01562 (E.D. Tex) – 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.
- 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.
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.
Trade Secrets Litigation
- 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.
- 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
- Included by Intellectual Asset Management in its inaugural edition of the Strategy 300 Global Leaders guide in 2021.
- Selected for the 2015 – 2021 editions of IAM Strategy 300 – The World's Leading IP Strategists
- Named a finalist for Managing Intellectual Property's "Practitioner of the Year (Litigation) - Massachusetts" award (2021) and identified as a "Patent Star - Patent Contentious - Massachusetts" (2018 – 2021)
- Identified in the IAM Patent 1000, a listing of the “World’s Leading Patent Practitioners,” as a “go-to attorney for technology patent litigation" (2015 – 2021)
- Recognized in Chambers USA: Nationwide – International Trade: Intellectual Property (Section 337) (2021)
- Recognized in Chambers USA: Massachusetts – Intellectual Property (2015 - 2017, 2021)
- Recognized among the most active International Trade Commission Section 337 practitioners (2021) and Inter Partes Review practitioners (2018 - 2020) by Patexia in its annual surveys
- Included on the Massachusetts Super Lawyers – Intellectual Property Litigation list (2007, 2011 - 2020)
- Recognized by The Legal 500 United States for Intellectual Property: Patent Litigation - International Trade Commission (2017 - 2018, 2021)
- Included on the Super Lawyers Top 100 Attorneys in Massachusetts list (2016)
Involvement
- International Trade Commission Trial Lawyers Association
- Member, Intellectual Property Owners Association, Standards Setting Committee
Recent Insights
Viewpoints
Optis Puts Apple’s Feet to the UK Fire: Commit to FRAND or Be Snuffed Out
October 4, 2021 |Blog
News & Press
Mintz Member and Chair of the Firm’s Intellectual Property Division Michael Renaud and Associate James Thomson were quoted in an article published by IPWatchdog discussing the recently released text of the “Restoring America Invents Act”, which would essentially end discretionary denial practice under precedential Patent Trial and Appeal Board (PTAB) cases and limit denial to petitions where “the same or substantially the same prior art or arguments previously were presented to the Office,” among other changes.
Mintz Member and Chair of the Firm’s Intellectual Property Division Michael Renaud, Member Adam Rizk, and Associate Matthew Karambelas co-authored an article published by IAM on adjudicating redesigns at the International Trade Commission including best practices for complainants managing discovery of redesigns.
Events
Mintz Member Mike Renaud will be speaking on a panel entitled, "The Growing Importance of Trade Secrets at the ITC." The panel will discuss the weakened U.S. patent system and the increasing value of trade secrets and the availability of injunctive relief in the form of exclusion orders that make the ITC a unique and attractive venue.
Mintz Member Mike Renaud will be speaking on panels entitled, "Developing best practices for selling patents" and "Navigating the complex licensing landscape."
Member and Chair of IP Division Mike Renaud spoke in an open discussion forum entitled, “Navigating the turbulent global SEP landscape," and Member Adam Samansky spoke on a panel titled "Lessons learned from 2020: improving best practice and reviewing necessary change."
Viewpoints
Optis Puts Apple’s Feet to the UK Fire: Commit to FRAND or Be Snuffed Out
October 4, 2021 | Blog | By Michael Renaud, Daniel Weinger, James Thomson
Recent developments indicate that the UK is a favorable jurisdiction that owners of standard essential patents (“SEP”) can leverage to obtain appropriate SEP rates from what would otherwise be unwilling licensees. Demonstrating the point, a recent order from Justice Meade of the High Court in the sprawling Pan Optis/Unwired Planet SEP dispute with Apple provides an outline to the UK’s approach to handling SEP implementers who are unwilling to commit to court-determined FRAND licenses.
Read more
The Road Less Travelled: Why Arbitration is an Increasingly Attractive Alternative for Resolving IP Disputes
September 26, 2021 | Blog | By Matthew Hurley, Michael Renaud, Oliver Ennis
When It Isn’t Better Late Than Never: ALJ Reins in on Redesigns First Disclosed in the Last Week of Fact Discovery
September 21, 2021 | Blog | By Michael Renaud, Adam Rizk, Matthew Karambelas, Tianyi Tan
In a recent IAM article, Levelling the playing field in ITC patent cases by identifying redesigns to a set deadline, we commented on best practices for ITC complainants to protect their interests against the nascent uptick of redesign submissions at the tail end of fact discovery. Although reasonable minds can differ as to whether the uptick in motion practice is coincidence or a more troubling sign that some respondents are using late redesign disclosures as a vehicle to put complainants at a disadvantage in fast-paced Section 337 proceedings, such late disclosures undoubtedly prejudice complainants’ ability to fully review and assess such disclosures for possible infringement.
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US Open for FRAND Business: The Fifth Circuit Vindicates Ericsson, Finding that Ericsson’s Offers were FRAND
September 3, 2021 | Blog | By Michael Renaud, Daniel Weinger, Meena Seralathan
The United States FRAND jurisprudence had a recent watershed moment in a decision that is sure to reverberate through the standard essential patent (SEP) world, and specifically SEP litigation in the United States. Earlier this week, a Fifth Circuit panel affirmed a jury verdict that found licensing offers made by Ericsson to HTC for Ericsson’s 4G SEPs complied with Ericsson’s FRAND obligations, the first jury verdict of its kind in the United States.
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Supreme Court Hammers Final Nail in the IP Bridge v. TCL Coffin
July 2, 2021 | Blog | By Michael Renaud, Daniel Weinger, Kara E. Grogan
On Monday, the Supreme Court denied TCL Communication’s certiorari petition, without comment, appealing the Federal Circuit’s ruling that the essentiality of a patent claim is a question for the jury rather than judges to resolve during claim construction. The denial of cert by the Supreme Court cements the Federal Circuit ruling which made proving infringement of standard essential patents easier by allowing reliance on the standard to show such infringement.
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Fast Track to Justice for Trade Secret Theft at the ITC: New Senate Bill Would Expand ITC Authority to Curtail Trade Secret Theft by Foreign Governments
June 23, 2021 | Blog | By Michael Renaud, Rich Gervase, Nicholas Armington, Allen Loayza
Amid the continuing threat to U.S. intellectual property rights posed by foreign actors, the International Trade Commission (ITC) is poised to become the latest federal agency to bolster protections for U.S. IP owners. The ITC’s broad power to exclude the importation into the U.S. of products that infringe American intellectual property now has the potential to be made even more robust through a new bill introduced by Senators John Cornyn (R-Tex.), Christopher Coons (D-Del.), and Todd Young (R-Ind.) on June 15, 2021, that would provide expedited relief for trade secret theft victims.
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Is This Seat Taken? A Chinese IP Court Proclaims Its Authority to Declare Global FRAND Terms
December 7, 2020 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
A Chinese Court recently decided that it has the willingness, and jurisdiction, to set a global licensing rate that is fair, reasonable, and non-discriminatory (“FRAND”) for standard essential patents (“SEP”).
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The Art of An SEP War: A Chinese IP Court’s Recent Use of Anti-Suit Injunction Invites A Battle that It Likely Won’t Win
October 26, 2020 | Blog | By Michael Renaud, James Wodarski, Daniel Weinger
The recent anti-suit injunction issued against InterDigital in its SEP litigation with Xiaomi is a somewhat predictable reaction to the recent UK Supreme Court decision against Huawei and ZTE. One of the central arguments there was that the UK courts were trying to set themselves up as the international arbiter of FRAND disputes.
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Fate of PTAB Judges and Decisions Now in Hands of Supreme Court
October 15, 2020 | Blog | By Michael Renaud, William Meunier, Monique Winters Macek
On October 13, 2020, the U.S. Supreme Court granted three petitions for writ of certiorari related to Arthrex v. Smith & Nephew addressing two issues that will determine the fate of PTAB judges and decisions.
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Another One Bites the Dust – N.D. Tex. Dismisses Antitrust Claims re FRAND Commitments with Prejudice
September 17, 2020 | Blog | By Michael Renaud, Joseph Miller
In the latest decision addressing antitrust liability for FRAND commitments, Judge Barbara M. G. Lynn of the Northern District of Texas dismissed a complaint from Continental Automotive Systems, Inc. (“Continental”) alleging, inter alia, violations of §§ 1 and 2 of the Sherman Act, and declaratory judgment as to FRAND obligations against Avanci, LLC (“Avanci”) and various members of its patent pool (collectively, “Defendants”).
Read more
News & Press
Mintz Member and Chair of the Firm’s Intellectual Property Division Michael Renaud and Associate James Thomson were quoted in an article published by IPWatchdog discussing the recently released text of the “Restoring America Invents Act”, which would essentially end discretionary denial practice under precedential Patent Trial and Appeal Board (PTAB) cases and limit denial to petitions where “the same or substantially the same prior art or arguments previously were presented to the Office,” among other changes.
Levelling the Playing Field in ITC Patent Cases by Identifying Redesigns to a Set Deadline
September 21, 2021
Mintz Member and Chair of the Firm’s Intellectual Property Division Michael Renaud, Member Adam Rizk, and Associate Matthew Karambelas co-authored an article published by IAM on adjudicating redesigns at the International Trade Commission including best practices for complainants managing discovery of redesigns.
Fed. Circ. Upholds ITC Infringement Finding On Milk Patent
September 20, 2021
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.
Federal Circuit Affirms ITC Victory for Glycosyn
September 17, 2021
Ericsson Fifth Circuit Win Further Fortifies SEP Owner Stance in U.S.
September 16, 2021
Mintz Member and Chair of the Firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Managing IP on a recent judgment issued by the U.S. Court of Appeals for the Fifth Circuit in HTC v Ericsson. In the article, Mr. Renaud commented on how the ruling indicates an emerging trend of U.S. courts rejecting the Smallest Saleable Patent Practicing Unit (SSPPU) argument made in the context of a fair, reasonable, and non-discriminatory (FRAND) dispute governed under European Telecommunications Standards Institute (ETSI)’s Intellectual Property rules.
International Comparative Legal Guide to Patent Laws and Regulations 2022: United States
September 15, 2021
Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Associate Matthew Karambelas co-authored the United States chapter of the twelfth edition of International Comparative Legal Guide’s Patent Laws and Regulations 2022. The chapter examined common issues in patent laws and regulations, including patent enforcement, patent amendment, licensing, and more, and provided a look ahead at how patent law is expected to evolve in the coming year.
Fifth Circuit FRAND Ruling Could Attract SEP Owners Back to US Courts
September 13, 2021
Mintz Member and Chair of the Firm’s Intellectual Property Division Michael Renaud was quoted in an article published by IAM on a recent judgment issued by the U.S. Court of Appeals for the Fifth Circuit in a breach-of-fair, reasonable, and non-discriminatory (FRAND) litigation between HTC and Ericsson, and how the decision could attract standard essential patent (SEP) owners back to U.S. courts.
Samsung, LG Settle DivX Patent Fights Over Smart TVs
July 30, 2021
Law360 reported that Mintz client American video codec company DivX, an early innovator in the digital streaming video and digital rights management scene, has reached confidential settlements with LG and Samsung, resolving international litigation claiming they infringe DivX’s streaming patents with their smart televisions. The Mintz team representing DivX is led by Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Member Adam Rizk and includes Member and Chair of the firm’s Intellectual Property Litigation Practice Matthew Hurley, Members Keith Carroll, Marguerite McConihe, Michael McNamara, Samuel Davenport, and Daniel Weinger, and Associates Matthew Karambelas, Jessica Perry, and Nana Liu.
Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Bloomberg Law on an upcoming trial before a U.K. court in a patent battle between Apple Inc. and Optis Cellular Technology LLC involving iPhones and other devices and its implications for global standard-essential patent disputes.
The Few Patent Jury Trials In 2020 Led To Enormous Verdicts
January 5, 2021
Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Law360 on the largest patent jury trial verdicts of 2020, specifically regarding the $1.9 billion bench trial judgment against Cisco Systems, Inc.
The Big SEP Victories Of Patent Owners In 2020
December 22, 2020
In this Law360 expert analysis article, Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members James Wodarski and Daniel Weinger reflected on the biggest standard essential patent (SEP) victories of patent owners in 2020.
The 10 Biggest Patent Rulings Of 2020
December 17, 2020
Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in Law360 on the biggest patent rulings of 2020, specifically Germany's top court's ruling in Sisvel v. Haier and Unwired Planet v. Huawei.
A Critique of Glory Days and How Reports of Anticompetitive Risks of Pools Have Been Greatly Exaggerated
November 4, 2020
Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Members James Wodarski and Daniel Weinger, and Associate Kara Grogan co-authored an article published by IPWatchdog that critiques an article recently published in the University of San Diego Law titled “Glory Days: Do the Anticompetitive Risks of Standards-Essential Patent Pools Outweigh Their Procompetitive Benefits?,” which criticized patent pools, alleging inefficiencies and anticompetitive risks of pools for standard essential patents.
Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Members James Wodarski and Daniel Weinger, and Associate Kara Grogan co-authored an article published by IPWatchdog examining patent pools, an elective market mechanism designed to provide benefits to both innovators and implementers.
Patent Stakeholders Weigh in on High Court Decision to Hear Arthrex
October 15, 2020
In IP Watchdog, Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Member William Meunier weighed in on the U.S. Supreme Court’s decision to grant certiorari in three cases involving Arthrex, Inc. focusing on the question of whether the administrative patent judges of the Patent Trial and Appeal Board were constitutionally appointed.
DOJ Support Of SEP Injunctions Should Stabilize Licensing
September 24, 2020
Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Member and Co-chair of the firm’s Antitrust Practice Joseph Miller, and Member Daniel Weinger co-authored a Law360 expert analysis article that examined an updated business review letter issued by the U.S. Department of Justice (DOJ)'s Antitrust Division to the Institute of Electrical and Electronics Engineers Inc., which clarified the DOJ's views on licensing and enforcement practices related to standard essential patent (SEP)s.
Michael Renaud, James Wodarski, and Mark Pino have been recognized in the 2020 edition of IAM Strategy 300: The World’s Leading IP Strategists.
Jury’s Role in Standard Patent Fights Gets Federal Circuit Boost
August 10, 2020
Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Bloomberg Law on the Federal Circuit’s recent decision in Godo Kaisha IP Bridge I v. TCL Commc’n Tech. Holdings Ltd. and its potential impact on owners of standard essential patents
3 Takeaways From Landmark German FRAND Decision
July 16, 2020
In an article published by Law360, Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted extensively on a long-awaited decision from the German Federal Court of Justice in Sisvel v. Haier, which provided guidance on how companies are expected to act when negotiating fair, reasonable and nondiscriminatory (FRAND) licenses for standard essential patents (SEP)s.
Patent Cases To Watch In The Second Half Of 2020
July 10, 2020
Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Law360 on patent cases to watch in the second half of 2020, including global disputes over licensing standard essential patents.
Firm Awarded 10-Year Contracts for Biotechnology and Mechanical Engineering Innovations
Joint Policy Statement and Recent Cases Confirm That Injunctive Relief on SEPs is Available at the ITC
March 19, 2020
Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members James Wodarski and Andrew DeVoogd co-authored an article published in the February 2020 issue of The Licensing Journal that examined opportunities for remedies including injunctive relief as redress against infringement for standard essential patent (SEP) owners at the U.S. International Trade Commission.
Mintz Member and Chair of the firm's Intellectual Property Division Michael Renaud, Member James Wodarski, and Associate Matthew Galica co-authored an article published by IAM on how policy and case law might affect standard-essential patent (SEP) rights and enforcement in the 2020s.
New Injunction Policy Boosts Power Of Essential Patents
January 10, 2020
Mintz Member and Chair of the firm’s Intellectual Property Division Michael T. Renaud was quoted in a recent Law360 article that examined a December 2019 joint policy statement from the U.S. Patent and Trademark Office and U.S. Department of Justice’s antitrust division stating that standard-essential patents should be treated no differently than other patents, and that companies that own them should be able to obtain injunctions.
The PTAB Has Another Appointment With the Federal Circuit + SEPs Have a Little More Bite at the ITC
October 30, 2019
The October 29 edition of the Skilled in the Art newsletter published by Law.com reported that Mintz achieved a favorable Notice of Initial Determination at the U.S. International Trade Commission on behalf of the firm’s client Netlist, Inc., a California-based technology company focused on developing innovative server memory module products, including technology that is essential to certain JEDEC memory standards. Significantly, this is the first time since 2013 that a Section 337 violation has been found based on a standard-essential patent.
SK Hynix Memory Products Infringe Netlist IP, ITC Judge Finds
October 22, 2019
Law360 reported that a U.S. International Trade Commission judge ruled that Korean manufacturer SK Hynix infringed on California-based technology company, and Mintz client, Netlist, Inc.’s standard essential patent related to server memory modules.
The article noted that the Mintz team representing Netlist includes Member and Chair of the Intellectual Property Division Michael Renaud, along with Members James Wodarski, Drew DeVoogd, Steve Akerley, Aarti Shah, and Associates Kristina Cary, Matthew Galica, and Tiffany Knapp.
The article noted that the Mintz team representing Netlist includes Member and Chair of the Intellectual Property Division Michael Renaud, along with Members James Wodarski, Drew DeVoogd, Steve Akerley, Aarti Shah, and Associates Kristina Cary, Matthew Galica, and Tiffany Knapp.
Here's Advice From Patent Attorneys For Innovators
October 4, 2019
Mintz Member and Chair of the firm’s Intellectual Property Division Michael T. Renaud was quoted in an article published by the Boston Business Journal featuring advice from top patent attorneys for innovators.
PTAB Says Mass. Biotech's Milk Patent Ineligible For Review
September 18, 2019
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.
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.
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.
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.
DOJ sensibly returns to antitrust fundamentals on patent licensing
November 23, 2018
A team of Mintz attorneys - Mike Renaud, Rob Kidwell and Rob Moore - authored this issues response op-ed discussing the Department of Justice's (DOJ) statements on intellectual property rights, "the New Madison Approach." This approach marks a return to the core principles on which the patent laws are predicated.
Patent monetization during World War FRAND
October 1, 2018
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.
What You Need To Know About Patent Litigation In Germany
July 27, 2018
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.
Is SEP Licensing Up To Standard?
June 4, 2018
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.
PTAB Uses Recent Precedent In Backing Elm Over Samsung
October 19, 2017
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.
Upcoming decisions will reveal whether the ITC still welcomes standard essential patents
September 1, 2017
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.
Mintz Secures Sweeping Win for Elm 3DS Innovations at U.S. Patent Trial and Appeal Board
August 29, 2017
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.
Mintz Scores Decisive Win for Straight Path Before U.S. Court of Appeals for the Federal Circuit
June 29, 2017
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.
Fed. Circ. Affirms Nix Of Medical Records IP Under Alice
April 13, 2017
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.
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 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.
Litigating standard-essential patents: recent developments
February 6, 2017
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.
What The Qualcomm Case Tells Us About FTC And FRAND
January 26, 2017
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 New Meaning For FRAND In Korea's Qualcomm Sanctions
January 24, 2017
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 Expands National IP Litigation Capabilities with Addition of Top Silicon Valley Attorney
January 17, 2017
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.
The impact of recent decisions regarding patent hold-up on the future of standards-setting activities
December 1, 2016
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).
Mintz Attorney Michael T. Renaud to Speak at 2016 IP Dealmakers Forum
November 14, 2016
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.
Standard Essential Patent Equality in the ITC
November 1, 2016
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 that examines the DTSA and how employers can fully leverage it to combat trade secret theft.
The Defend Trade Secrets Act: A Powerful New Tool for Employers
October 25, 2016
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.
Eighty-Four Mintz Attorneys Named 2016 Massachusetts Super Lawyers and Rising Stars
October 18, 2016
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.
SEPs At The ITC: Guidance From Recent Decision
October 6, 2016
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.
Patent Co. Says Deal With Honda Ends Infotainment Probe
August 22, 2016
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.”
Mintz Further Expands IP Practice with Eighteen Attorneys
January 09, 2015
Mintz Helps Client Achieve Significant ITC Patent Victory
September 04, 2014
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