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Michael T. Renaud

Member / Chair, Intellectual Property Division

[email protected]

+1.617.348.1870

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Michael Renaud is known as one of the world’s leading intellectual property strategists. As Chair of Mintz’s IP Division and a member of the firm’s policy committee, Michael leads an international team of IP prosecutors, litigators, transaction and technology specialists. A pioneer in IP strategy, Michael has unique experience and expertise in formulating and executing multi-national enforcement and monetization strategies. Through traditional litigation and licensing approaches, and by creating markets for, and brokering the sale and acquisition of, intellectual property portfolios, Michael has helped his clients realize returns of over $1 billion.

Michael is driven to realize his clients’ business objectives employing his decades of experience in all aspects of IP, including: evaluating and valuing diverse patent portfolios, including portfolios with substantial SEPs, identifying untapped assets and value drivers, conducting IP due diligence, counselling investment firms on implementing strategies for leveraging patent value, negotiating deals and generating revenue through strategic partnerships, and prosecuting enforcement actions before the International Trade Commission, in the federal district and appellate courts and international patent courts.  Michael’s renowned success both in and out of the courtroom, stems from his combination of seasoned legal judgment, strong business acumen, and tactical knowledge of global IP market conditions.

He is annually recognized in Chambers, IAM’s Patent 1000 and Strategy 300, and by Managing IP, including as a finalist for Massachusetts Litigator of the Year (2021-2023) and Patent Star – Contentious (2018-2023). He has also been ranked by Patexia as the #6 Most Active ITC Attorney Representing Complainants and among the Most Active ITC Attorneys overall, as well as ranked 5th by Patexia among the Best Performing ITC Attorneys Representing Complainants and ranked among Best Performing ITC Attorneys overall (2023). In 2023, he was named by Business Today as one of the “Top 10 Most Influential Section 337 Intellectual Property Lawyers in USA."

Enforcement & Licensing

Michael develops and implements multinational enforcement, licensing, and litigation strategies. He helps clients realize significant value by identifying patent assets that can be enforced to protect clients’ competitive positions and generate licensing revenue. He frequently manages parallel litigations in U.S. Federal District Courts, in front of the International Trade Commission (ITC), and in global jurisdictions including China, Europe, and the UK. Recent successful Mintz-coordinated global efforts have involved regional IP courts in Shanghai, China, Brazil, and in Dusseldorf and Mannheim, Germany, in addition to multiple U.S. venues. He has also been highly successful in defending against inter partes review (IPR) petitions filed by accused infringers attempting to invalidate clients’ patents.

Infringement Defense

Michael 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 approach them. He develops defense strategies that align with clients’ goals for each matter, whether to get out quickly or fight hard to establish a reputation as a difficult defendant. He has successfully used Alice motions to defuse efforts by serial plaintiffs to attack clients’ innovative positions in the marketplace, often eliminating threats early to limit clients’ financial risk.

Trade Secrets

Michael handles complex trade secret matters involving clients’ crown jewel innovations, emphasizing the protection of those rights in the context of failed contractual agreements. Michael recognizes the critical importance of trade secrets to many clients’ overall IP strategies and helps to preserve trade secrets rights through counseling, negotiated transactions, and litigation. He represents domestic and international clients on both sides of trade secrets disputes, with particular expertise in representing innovative companies involved in joint development agreements and other collaborative contractual arrangements with global entities.

Experience

International Trade Commission

Year after year, Michael has been recognized by Patexia as one of the top ten most active and best performing attorneys representing complainants at the International Trade Commission. For more information on this recognition, please click here.

  • Certain Semiconductor Devices, Mobile Devices Containing the Same, and Components Thereof (337-TA-1336) – Represented patent owner Daedalus Prime in ITC investigation involving four patents related to semiconductor manufacturing processes used to make FINFET transistors. The case against Samsung was dismissed following a confidential license and settlement agreement. TSMC settled just prior to trial.
  • Certain Integrated Circuits, Mobile Devices Containing the Same, and Components Thereof (337-TA-1335) - Represented Daedalus Prime against Samsung Electronics and Qualcomm Corporation in ITC investigation involving four patents related to power management techniques in computer processors. The case against Samsung was dismissed following a confidential license and settlement agreement. Evidentiary hearing involving the remaining parties was held in August 2023 and ultimately settled before a final decision on the merits.
  • Certain Graphics Systems, Components Thereof, and Digital Televisions Containing the Same; Inv. (337-TA-1318) – Represented Advanced Micro Devices as their lead counsel in an ITC investigation asserting AMD’s proprietary graphics processing unit (GPU) patents against TCL and Realtek Semiconductor. After a week-long trial, and multiple rounds of briefing to the ALJ and the Commission, the Commission found and upheld the ALJ’s initial determination that all respondents violated Section 337, and issued a limited exclusion order against both TCL and Realtek, as well as a cease-and-desist order against TCL. The limited exclusion order blocks TCL and Realtek from importing "certain graphics systems, components thereof, and digital televisions containing the same” that infringe AMD’s proprietary graphics IP.
  • Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (II) (337-TA-1297) – Represented DivX, a video codec company headquartered in San Diego, in enforcing patents before the ITC and in the District of Delaware against Respondent TCL. The asserted patents involve innovations relating to internet video and streaming media, and in the ITC action, Amazon moved to participate as an Intervenor. Also represented DivX in previous ITC investigation involving one of the same patents in which LG and Samsung settled with DivX prior to the ITC evidentiary hearing. These additional filings, in addition to the original filings, and related negotiations resulted in TCL and DivX signing an IP licensing agreement which resolved all pending litigations.
  • Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (337-TA-1222) – Represented DivX in a multinational patent licensing enforcement program 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. After that hearing, and before final determination from the ITC, Mintz filed an additional action against TCL at the ITC, Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (II) (337-TA-1297). This additional filing, in addition to the original filings and related negotiations, resulted in TCL and DivX signing an IP licensing agreement which resolved all pending litigations.
  • Certain Semiconductor Devices, Products Containing the Same, and Components Thereof (II) (337-TA-1177) - Represented GlobalFoundries as lead counsel at the ITC 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 Semiconductor Devices, Integrated Circuits, and Consumer Products Containing the Same (337-TA-1149) – Represented Innovative Foundry Technologies as part of a global enforcement strategy to protect five asserted patents relating to semiconductor fabrication and packaging. Respondents for the ITC matter included TSMC, Qualcomm, MediaTek, and Vizio. Cases were simultaneously filed in U.S. District Court and internationally in Germany and China. The investigation resolved favorably prior to the conclusion of discovery.
  • 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, the Administrative Law Judge issued an Initial Determination finding that Jennewein had infringed claims of Glycosyn’s patent and recommended a limited exclusion order issue, including a certification provision with heightened requirement.
  • Certain Graphics Systems, Components Thereof, and Consumer Products Containing the Same (337-TA-1044) – Represented Advanced Micro Devices (AMD) as complainant in the ITC asserting patents covering graphics processing technology employed by smart devices such as televisions and handsets. Respondents include LG Electronics, VIZIO, MediaTek, and Sigma Designs, Inc. (SDI). Achieved settlement with LG prior to the conclusion of expert discovery. Following the evidentiary hearing, the presiding ALJ issued an initial determination finding a violation of Section 337 and recommending the imposition of an exclusion order against the remaining Respondents’ accused products. The ITC affirmed the ALJ’s finding of a violation. 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.

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 13 inter partes reviews. PTAB held that petitioners did not establish the unpatentability of 105 claims across 11 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

  • Nanoco Technologies, Ltd. v. Samsung Electronics Co., Ltd., et al. (E.D. Tex., 2:20-cv-00038) - Represented British nanotechnology company Nanoco Technologies, Ltd., a world leader in the development and manufacture of cadmium-free quantum dots and other nanomaterials, in a patent infringement case involving the synthesis of quantum dots, and use of quantum dot film resins in electronic display devices. The Mintz team also represented Nanoco in corresponding IPR proceedings before the USPTO. The firm secured a $150 million settlement for the client, which put an end to all global litigation between Nanoco and Samsung.
  • Acera Surgical, Inc. et al v. Nanofiber Solutions, LLC, et al (D. Del., 1:20-cv-00980) - Represented multiple defendants including Nanofiber Solutions and the Research Foundation for the State University of New York as defendants against allegations of infringing five patents related to wound closure innovations using nanofiber technology. The parties amicably settled.
  • Celerity IP, LLC et al v. LG Electronics, Inc. et al (E.D. Tex, 2:23-cv-00316) – Representing Celerity IP in patent litigation related to 4G network technology, marking the first enforcement action filed by Celerity IP as part of its ongoing efforts in licensing ASUS’s and Innovative Sonic’s telecom portfolio.
  • Solta Medical, Inc. v. Lumenis, Inc. et al (D. Mass., 1:19-cv-11600) - Defended Lumenis in a patent infringement case involving two U.S. patents related to ablative laser tissue treatment. The case was brought by a direct competitor in the field of aesthetic medicine surgical instruments, dermatology medical devices, and related technologies. The case settled favorably following a Markman hearing and after Mintz filed a motion for summary judgment that there would be no pre-suit damages.
  • Innovative Foundry Technologies LLC v. Semiconductor Manufacturing International Corporation, et al. (W.D. Tex., 6:19-cv-00719) - Represented Plaintiff in enforcing four 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. Successfully transferred declaratory judgment filed in W.D. Tex, and all claims between IFT and SMIC have been confidentially settled.
  • Preservation Wellness Technologies, LLC v. NextGen Healthcare Information Systems, LLC (E.D. Tex., 2:15-cv-01562) – U.S. Federal Circuit Judge William Bryson presided over the case, granting Mintz client NextGen’s motion to dismiss after oral argument. 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. Fla.- 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

Michael has been recognized by Patexia as a top attorney handling Inter Partes Reviews at the Patent Trial and Appeal Board. More information on this recognition can be viewed here.

  • Represented Constellation Designs as counsel in multiple proceedings adverse to LG Electronics before the PTAB over patents related to the emerging ATSC 3.0 (NextGen TV) standard for television broadcasts, which resulted in denial of inter partes review in the majority of cases.
  • Representing Koninklijke Philips N.V. and Philips North America LLC (Philips) in defending eight IPR petitions filed by TCL Communications and Intel Corporation. The petitions were filed in response to enforcement litigation filed by Mintz on behalf of Philips at the International Trade Commission and in District Courts. The Patent Trial and Appeal Board denied institution to all five petitions filed by TCL and one of the three petitions filed by Intel. The remaining two Intel IPRs are active.
  • 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.
  • Successfully represented Shopify as petitioner to invalidate claims of three patents related to characteristics of e-commerce platforms asserted by DDR in the District of Delaware. Mintz then briefed and argued the issues before the Federal Circuit which affirmed the PTAB's invalidity findings.
  • Represented Elm 3DS Innovations in a series of 14 IPRs filed by leading technology companies, including SK Hynix, Micron, and Samsung. Mintz was 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 confirmed validity of all but two challenged claims. PTAB's determination was upheld on appeal to the Federal Circuit.
  • Successfully defended 17 inter partes reviews instituted against patents owned by our client, Straight Path, and denied institution of three others. All patents concern technology for facilitating point-to-point communications over computer networks. Petitioners in these matters were Samsung Electronics Co., Ltd.; Cisco Systems, Inc., LG Electronics, Inc.; Toshiba Corp.; VIZIO, Inc.; Verizon Communications, Inc.; Hulu, LLC; and Avaya Inc.
  • Successfully represented Innovative Foundry Technologies in defending four of its semiconductor patents against IPR petitions filed by SMIC Americas. PTAB denied two of the petitions and then terminated the other two petitions in light of subsequent settlement.

Trade Secrets Litigation

  • New England Biolabs, et al. v. Enzymatics, Inc. (D. Mass., 1:12-cv-12125) – 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.
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viewpoints

Nothing for free – the real costs of ChatGPT

May 11, 2023 | Blog | By Michael Renaud, Marguerite McConihe, Nana Liu

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Successful defense of trade secrets in litigation begins with evaluating valuable confidential information and steps taken to safeguard it before any disputes arise. Trade secret asset management allows companies to effectively frame misappropriation or theft claims and advance arguments at every stage of a trade secrets dispute.
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Apple’s Hold-out Strategy Nears End & Appears to Backfire in UK

November 9, 2022 | Blog | By Michael Renaud, Daniel Weinger, James Thomson

The UK has again demonstrated the ongoing trend against hold-out, approving an order forcing Apple to commit to take a license on FRAND terms, to be determined by the court, or face an injunction. This ruling is the latest in a line of decisions favorable to SEP holders across Europe and the United States that seem to be retilting SEP licensing towards more balance between innovators (patent owners) and implementers (alleged infringers). While there is more progress to be made, and the recognition of hold-out as a real problem continues to gain traction, this new UK decision reinforces basic principles of patent law: injunctions for SEPs are a real possibility.
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Rule 11 Sanctions Appropriate for Frivolous Inventorship Pleading

July 13, 2022 | Blog | By Michael Renaud, Brad M Scheller, Robert Sweeney

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5th Circuit Confirms Avanci SEP Pool is Safe: No Antitrust Issue with Avanci’s Pool

July 6, 2022 | Blog | By Daniel Weinger, Michael Renaud, Bruce Sokler, James Thomson

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DOJ Breaking with Big Tech Approach to SEPs

June 13, 2022 | Blog | By Daniel Weinger, Michael McNamara, Michael Renaud, James Thomson

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Rules for Complainant Success in ITC Trade Secret Litigation

May 16, 2022 | Blog | By Jonathan Engler, Michael Renaud

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The ITC Should Put Its Foot Down on Patent Hold-out and Hold-up

May 9, 2022 | Blog | By Jonathan Engler, Michael Renaud

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News & Press

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Mintz continues to earn high rankings by Chambers Global, a guide to the top law firms and attorneys worldwide. Four Mintz attorneys and two of the firm’s practices are ranked in the 2024 Chambers Global edition.
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The US International Trade Commission has ruled in favor of Advanced Micro Devices Inc. (AMD), represented by IP Chair Michael Renaud in a high-profile patent infringement case. The ITC’s final determination found that several companies, including major Chinese manufacturer TCL Industries Holding, violated federal law by importing digital televisions and other products infringing on an AMD US patent. This decision resulting in a limited exclusion order and cease-and-desist against the infringing companies underscores the strength of AMD’s patented semiconductor processor technology.
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BOSTON – Nine Intellectual Property attorneys from Mintz have been recognized in the 2024 edition of the Intellectual Asset Management (IAM) Strategy 300 Global Leaders Guide.
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Managing IP profiled Mintz’s growth in high-end litigation in an interview with IP Chair Michael Renaud. The article recognized Mintz’s strategic and integrated approach to adding client value. In the article, Mike discussed the team’s significant investment in developing true market expertise that provides an extra layer of commercial insight based on the law and tech. As growth mode continues, Mike shared he is continuing to look for lawyers who can add client value beyond the basics.
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BOSTON – Twenty-five Mintz attorneys have been named to Boston Magazine’s Top Lawyers list.
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Law360 detailed the arrival of IP Partner Y. Jenny Chen PhD to Mintz’s life sciences practice in Boston.
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BOSTON – Y. Jenny Chen, PhD has joined Mintz as a Member in the firm’s highly-regarded Intellectual Property (IP) practice, adding further expertise and depth to the firm’s life sciences offering.
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Mintz is pleased to announce that 32 attorneys have been named Massachusetts Super Lawyers and 27 attorneys have been named Massachusetts Rising Stars for 2023.
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TORONTO – Mintz is pleased to announce that Intellectual Property attorney Anthony de Fazekas has joined the firm, adding further depth to its highly-regarded Technology practice.
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Mintz has been recognized as one of the most active and high-performing law firms in the Patexia 2023 PTAB Intelligence Report. The report, which provides a comprehensive overview of the best performing and most active attorneys and law firms, also named two Mintz intellectual property practitioners among the most active and best-performing in the country.
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Mintz is pleased to announce that Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members Matthew Galica, Frank Gerratana, Marguerite McConihe, Michael Newman, Adam Rizk, Adam Samansky, Daniel Weinger, and James Wodarski have been named to the 2023 IAM Strategy 300: The World’s Leading IP Strategists list.
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Mintz is pleased to announce that thirtneen Members have been named to Lawdragon's 500 Leading Litigators in America list, which honors the nation’s most elite courtroom advocates.
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Steven Andersen from LINE interviews Michael Renaud and Marguerite McConihe for the Spring 2023 issue.
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Mintz is pleased to announce that 120 firm attorneys have been recognized as leaders by Best Lawyers® in the 2024 edition of The Best Lawyers in America©.
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BOSTON, MA – In the 2023 edition of 'IP Stars,' published by Managing Intellectual Property (Managing IP), Mintz achieved recognition in two nationwide categories and received acknowledgment for the exceptional performance of nine of its attorneys.
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Intellectual Property Chair Michael T. Renaud, Member Jonathan J. Engler, and Associate Nicholas Armington co-authored an article published in the May/June 2023 issue of IP Litigator examining a recent trade secret case in California.
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BOSTON– Mintz’s award-winning Intellectual Property (IP) Practice again earned national recognition in the 2023 edition of IAM Patent 1000 – The World’s Leading Patent Practitioners. The guide recognized Mintz with three firm-wide rankings and 10 attorneys received a total of 11 individual recommendations.
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BOSTON –Mintz announced today that 39 of its practices and 81 of its attorneys earned recognition in the 2023 edition of Chambers USA, a guide to the country’s leading law firms.
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Law360 published an article written by Members Michael Renaud, Marguerite McConihe, and Associate Nana Liu analyzing potential intellectual property risks companies should consider when utilizing AI tools.
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Boston, MA – Mintz is pleased to announce that Michael T. Renaud, Chair of the Intellectual Property Division, and the firm’s International Trade Commission (ITC) Practice have been shortlisted in the 2023 edition of Managing Intellectual Property’s (MIP) Americas Awards. The awards recognize the “remarkable achievements and developments” of firms, individuals and companies impacting the IP sector over the past year.
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BOSTON – Mintz has been recognized as one of the most active and high-performing International Trade Commission (ITC) law firms in the Patexia 2023 ITC Intelligence Report.
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Mintz continues to earn high rankings in Chambers Global 2023, a guide to the top law firms and attorneys worldwide.
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BOSTON- Six attorneys from Mintz have been recognized in the 2023 edition of the Intellectual Asset Management (IAM) Strategy 300 Global Leaders Guide.
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Trade Secrets At The ITC

November 16, 2022

Mintz Member and Intellectual Property Chair Michael T. Renaud and Member Jonathan J. Engler co-authored an article published by IAM that explores the key components of the ITC and assess whether it is the most desirable route for plaintiffs.
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35 Mintz attorneys have been named Massachusetts Super Lawyers and 25 Mintz attorneys have been named Massachusetts Rising Stars for 2022.
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Mintz Member and Intellectual Property Chair Michael T. Renaud and Associate Matthew Karambelas co-authored the USA chapter of the International Comparative Legal Guide – Patents 2023 which focused on developments in the U.S. patent market and what changes are expected in the year to come.
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Twelve Mintz Members have been named to the inaugural Lawdragon 500 Leading Litigators in America list, which honors the nation’s most elite courtroom advocates.
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Mintz continues its ongoing commitment to ensuring the firm is an equitable workplace, establishing a new Diversity, Equity and Inclusion (DEI) committee that reports directly to the firm's main decision making body, the Policy Committee. The new Equity Advisory Council (EAC) will be responsible for driving equity for the firm’s attorneys, especially women, attorneys of color and LGBTQ+ attorneys.
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Mintz is pleased to share that two attorneys and the firm’s Patent practice have been shortlisted in the 2022 edition of Managing Intellectual Property’s (MIP) Americas Awards. The awards recognize the “remarkable achievements and developments” of firms, individuals and companies impacting the IP sector over the past year. 
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Mintz is pleased to announce that Intellectual Asset Management (IAM) named Michael Renaud, James Wodarski and Frank Gerratana to its 2022 edition of the IAM Strategy 300 Global Leaders Guide, a supplement to the IAM Strategy 300: The World’s Leading IP Strategists. According to IAM, the guide “draws from the worlds of private practice, consulting, and other service providers, with specialists from the major IP markets in North America, Europe and Asia. Together they possess a wealth of expertise across disciplines and sectors.”
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Law360 detailing high-profile patent cases to watch in 2022. Specifically, Mr. Renaud commented on American Axle v. Neapco, a “monster” Federal Circuit decision involving patent eligibility under Section 101 of the Patent Act, which the U.S. Supreme Court is considering taking up.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted extensively in an article published by Law360 examining the potential impact for standard-essential patent (SEP) owners of the U.S. Department of Justice’s and the U.S. Patent and Trademark Office’s draft policy statement concerning licensing negotiations and remedies for SEPs subject to voluntary F/RAND commitments.
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Mintz Member and Chair of the firm’s Intellectual Property Litigation Practice Matthew Hurley, Member and Chair of the firm’s Intellectual Property Division Michael Renaud, and Associate Oliver Ennis co-authored an article published in the November/December 2021 issue of IP Litigator exploring why arbitration has become an increasingly attractive alternative for resolving IP disputes. The authors wrote that while arbitration isn’t the right fit (or even available) in all situations, IP rights holders should consider adding it to their enforcement strategies.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Managing IP examining whether the U.S. Department of Justice’s and the U.S. Patent and Trademark Office’s new standard-essential patent draft policy would speed up or stall licensing negotiations if finalized.
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Law360 featured the arrival of seasoned U.S. International Trade Commission attorney Jonathan Engler as a Member of Mintz’s Intellectual Property Practice in Washington, D.C. The article included commentary from Mr. Engler on what attracted him to Mintz and areas of focus within his practice, and also included a quote from Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud.
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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.
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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.
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Law360 reported that the U.S. Court of Appeals for the Federal Circuit recently upheld the International Trade Commission's finding that a pair of bacteria strains used by German-based Jennewein infringed a Glycosyn milk patent. The article included a quote from Mintz Intellectual Property Member Michael Newman, noting that, in addition to Mr. Newman, Glycosyn was represented by Member and Chair of the firm's Intellectual Property Division Michael Renaud, Members Thomas Wintner and James Wodarski, and Associates Courtney Herndon and Matthew Karambelas.
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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.
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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.
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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.
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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.
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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.
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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.
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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.
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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.
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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.
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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.
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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.
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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.
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Michael Renaud, James Wodarski, and Mark Pino have been recognized in the 2020 edition of IAM Strategy 300: The World’s Leading IP Strategists.
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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
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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.
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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. 
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Firm Awarded 10-Year Contracts for Biotechnology and Mechanical Engineering Innovations
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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.
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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. 
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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.
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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.
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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.
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.
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.
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.
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.
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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.
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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.
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.
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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. 
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.
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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.
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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.
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.
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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.
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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.”
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Events & Speaking

Moderator
Dec
6
2023
Conference Reference Image
Moderator
Dec
7
2022
Webinar Reference Image
Moderator
Dec
6
2021

8th Annual IP Dealmakers

Dealmakers Forums

Conference Reference Image
Speaker
Nov
14
2021

2021 IPBC Global

IAM

Hyatt Regency Seattle

Conference Reference Image
Moderator
Nov
9
2021
Webinar Reference Image
Speaker
Sep
13
2021

IPWatchdog LIVE 2021

IPWatchdog

Dallas, TX

Conference Reference Image
Panelist
Apr
28
2021

Patent Transactions 2021

IAM

Virtual Event

Conference Reference Image
Moderator
Mar
22
2021

IPBC Connect 2021

IAM

Virtual Event

Conference Reference Image
Moderator
Dec
3
2020

7th Annual IP Dealmakers

Dealmakers Forums

Conference Reference Image
Moderator
Speaker
Sep
24
2020
Conference Reference Image
Speaker
Moderator
Nov
13
2019
Panelist
Sep
10
2019

Patent Masters Symposium

IPWatchdog Institute

Renaissance Arlington Capitol View, 2800 S Potomac Ave, Arlington, VA

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

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Recognition & Awards

  • Recognized in Best Lawyers in America: Patent Law (2023 – 2024); Intellectual Property Litigation (2024); Patent Litigation (2024)

  • Recognized in Chambers USA: Nationwide – International Trade: Intellectual Property (Section 337) (2021 – 2023), and in Chambers USA: Massachusetts - Intellectual Property (2015 – 2017, 2021 – 2023)

  • Chambers Global Guide: International Trade: Intellectual Property - Section 337 (2022 – 2024)

  • Selected IAM Strategy 300 – The World's Leading IP Strategists (2015 – 2023)

  • Named to IAM Strategy 300: Global Leaders – All Individuals (2023 - 2024)

  • Identified in the IAM Patent 1000, “World’s Leading Patent Practitioners: Gold", “go-to attorney for technology patent litigation" (2015 – 2023), and as a transactions strategist in 2022 & 2023.

  • Ranked 6th by Patexia among the Most Active ITC Attorneys Representing Complainants and ranked among Most Active ITC Attorneys overall (2023)

  • Ranked 5th by Patexia among the Best Performing ITC Attorneys Representing Complainants and ranked among Best Performing ITC Attorneys overall (2023)

  • Ranked by Patexia among the most active Inter Partes Review practitioners (2018 – 2021)

  • Named a finalist for Managing Intellectual Property's "Practitioner of the Year (Litigation) - Massachusetts" award (2021 – 2023) and identified as a "Patent Star - Patent Contentious - Massachusetts" (2018 – 2023)

  • Listed in Boston Magazine’s Top Lawyers (2023)

  • Recognized in Business Today's list of 10 Most Influential Section 337 Intellectual Property Lawyers in USA (2023)

  • Included on the Massachusetts Super Lawyers – Intellectual Property Litigation list (2007, 2011 – 2023)

  • Lawdragon: "500 Leading Litigators in America" (2022 – 2023)

  • 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)

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Involvement

  • International Trade Commission Trial Lawyers Association
  • Member, Intellectual Property Owners Association, Standards Setting Committee
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Michael T. Renaud

Member / Chair, Intellectual Property Division

Boston