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Michael T. Renaud

Member / Chair, Intellectual Property Division

[email protected]

+1.617.348.1870

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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)

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

News & Press

Events

Viewpoints

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The Standard Does Rule Them All: Federal Circuit Panel Finds Standard Sufficient to Prove Infringement for SEP Compliant Products

August 5, 2020 | Blog | By Michael Renaud, James Wodarski, Daniel Weinger, Kara E. Grogan

The Federal Circuit yesterday, in a decision likely to be celebrated by holders of standard essential patents (“SEPs”), found that it is appropriate for the jury to decide essentiality of a patent, rather than the judge during claim construction.  This decision in Godo Kaisha IP Bridge I v. TCL Commc’n Tech. Holdings Ltd. also approved of the use of the standard as evidence of infringement where it was established that the accused products are standard compliant. 
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

IPR and Fast-Moving District Court Litigation: PTAB Formalizes the Analysis for Balancing Efficiency and Fairness

July 17, 2020 | Blog | By Michael Renaud, Daniel Weinger, Adam Rizk, Serge Subach

The Patent Trial and Appeal Board (“PTAB”) has designated two key institution decisions as “Informative.”  With these informative decisions, the PTAB has provided guidance on how the PTAB will apply efficiency and fairness factors that guide decisions to institute an inter partes review (“IPR”) when there is a fast-moving parallel district court litigation that may reach trial before the PTAB’s final written decision would be due.
Read more
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IT TAKES TWO TO TANGO: The German Federal Supreme Court Acknowledges That Infringer Hold-Out is a Real Problem

July 16, 2020 | Blog | By Michael Renaud, James Wodarski, Matthew Galica

Germany’s highest court has clearly and emphatically placed SEP implementers on notice that hold-out will not be tolerated, and that implementers must proactively share the burden and obligation to timely achieve a FRAND license.  An infringer’s conduct during FRAND negotiations is decisively important, and an infringer’s failure to undertake its burden and satisfy its obligations will preclude it from claiming that the patentee acted anti-competitively, or abused a dominant market position. 
Read more
Intellectual Property Viewpoints Thumbnail
Recent oral arguments at the Fed Circuit suggest that the U.S. may be taking steps which would enhance its attractiveness for SEP patent holders looking to resolve licensing disputes.  The Federal Circuit heard oral argument on Monday, July 6th, in Godo Kaisha IP Bridge I v. TCL Commc’n Tech. Holdings Ltd., No. 19-2215, that may pave an easier path for owners of standard essential patents (“SEPs”) to prove literal infringement of products that comply with that standard. 
Read more
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Shifting “Sands”: New Facts on the Ground Justify Institution of a Previously-Denied IPR

June 25, 2020 | Blog | By Michael Renaud, Adam Rizk, Daniel Weinger, Serge Subach

In a rare reversal, the Patent Trial and Appeal Board (“PTAB”) reassessed the Fintiv factors in a decision on a petition for rehearing of a previous decision denying institution of an inter partes review (“IPR”).  
Read more
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No Fishing Allowed: Discovery of Litigation Funding Requires Articulation of Relevance Beyond Speculation

June 18, 2020 | Blog | By Michael Renaud, Andrew DeVoogd, Daniel Weinger, Catherine Xu

Read more
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Arbitration of IP Disputes in a Post-COVID-19 World

June 2, 2020 | Blog | By Matthew Hurley, Michael Renaud, Nicholas Armington

The COVID-19 pandemic has caused individuals and companies alike to face the reality of a rapid economic downturn followed by a potentially slow recovery characterized by continued economic challenges.
Read more
Intellectual Property Viewpoints Thumbnail
The Patent Trial and Appeal Board (“PTAB”) recently sent a warning to alleged infringers not to wait for the one year deadline to file IPR petitions, or risk discretionary denial.  On May 13, 2020, the PTAB exercised its discretion to deny institution of an inter partes review (“IPR”) petition filed by Apple due to the advanced state of a parallel district court litigation in the Western District of Texas.
Read more
Intellectual Property Viewpoints Thumbnail
After its recent ruling in Sisvel’s favor, Germany’s highest court on patent matters is expected to issue a highly favorable and detailed decision for standard-essential patent (SEP) owners seeking to prevent patent “hold-out” by unwilling licensees. 
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Trade Secrets Viewpoint Thumbnail
The coronavirus pandemic has created profound changes to how many Americans do their work, with an outsized number now working from home. This arrangement, while necessary given social distancing requirements and the stay-at-home advisories in many states, has created a marked increase to the threat of trade secret misappropriation.
Read more

News & Press

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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 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.”

Events

Speaker
Sep
13
2021
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
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