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Nana Liu

Associate

[email protected]

+1.415.432.6004

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Nana focuses her practice on patent litigation, and handles cases at the International Trade Commission, in federal district courts, and in the US Court of Appeals for the Federal Circuit. She has litigated matters involving high tech, biologic, and chemical innovations, including Hatch-Waxman cases. 

Nana serves as a key member of case teams at all stages of litigation, including as primary technical associate. In this capacity, she collaborates in the day-to-day with expert witnesses, and is involved in the development of infringement/non-infringement and validity/invalidity theories.  She also handles domestic industry economic analysis in Section 337 cases.  She routinely has a lead role in pre-suit diligence, fact and expert discovery, claim construction, preparing fact witnesses and expert witnesses for deposition, motion practice, trial preparation, and post-trial briefing. 

Prior to joining Mintz, Nana served as a judicial law clerk to the now-retired Hon. Andrew R. Grainger of the Massachusetts Appeals Court.

While earning her law degree, Nana served as a judicial intern to the Hon. Norman H. Stahl, a Senior Judge of the US Court of Appeals for the First Circuit, and was a legal intern with Greater Boston Legal Services’ Asian Outreach Unit. In law school, Nana was a senior staff editor of the Northeastern University Law Journal.

Prior to law school, Nana spent several years conducting bacterial immunology R&D at the Cambridge, Massachusetts location of a global company that specializes in the development of new vaccines.

Experience

  • Truveris, Inc. v. SkySail Concepts, LLC (Fed. Cir. 23-1024) - Represented SkySail Rx as Defendant-Appellee in an appellate case adverse to Truveris related to a patent for a computer system that manages the selection of prescription drug plans. The Federal Circuit issued a per curiam summary affirmance of the District Court’s order granting SkySail’s motion to dismiss the case.
  • Truveris, Inc. v. SkySail Concepts, LLC, NDOH-1-21-cv-01262 – Defended SkySail against allegations of patent infringement of a computer system that manages the selection of prescription drug plans.  The District Court granted SkySail’s motion to dismiss for lack of patentable subject matter under 35 U.S.C. § 101.  The District Court granted the motion because the asserted claims of plaintiff’s prescription drug plan selection management patent encompassed unpatentable subject matter and found that that the claims were directed toward an abstract idea.
  • Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (337-TA-1222) – Represented DivX, a video codec company headquartered in San Diego, in enforcing patents before the ITC in the District of Delaware. The asserted patents involve innovations relating to digital rights management and streaming media. LG and Samsung settled after the Markman order was issued, leaving TCL as the sole remaining respondent. Shortly after the seven day evidentiary hearing held in July 2021, one of the two principal suppliers of the accused streaming technology to TCL, namely Roku, stepped in and took a license to DivX’s portfolio, thus partially resolving DivX’s claims against TCL. Prior to the court issuing a decision on the merits, DivX and TCL entered into a bilateral settlement agreement resolving DivX’s remaining claims against TCl and bringing an end to all pending litigation.
  • Certain Semiconductor Devices, Products Containing the Same, and Components Thereof (II) (337-TA-1177) - Represented GlobalFoundries at the International Trade Commission and in multiple Western District of Texas actions, involving the direct and indirect infringement of four patents related to semiconductor devices, integrated circuits, and products containing the same. Additional defendants in these actions included Apple, Broadcom, Cisco, nVidia, Arista, Asus, and Lenovo. Within 2.5 months of filing at the ITC, the cases settled on favorable terms.
  • Certain 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 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.
  • Kowa Company, Ltd., et al v. Amneal Pharmaceuticals, LLC, 2018-1051 (Fed. Cir.) – Successfully represented appellees Kowa Company, Kowa Pharmaceuticals America, Inc. and Nissan Chemical Corporation at the Court of Appeals for the Federal Circuit, against Amneal Pharmaceuticals. The Federal Circuit affirmed the judgment of the U.S. District Court for the Southern District of New York (Crotty, J.), upholding the validity and infringement of two patents owned by our clients. Oral argument took place on Thursday, December 6, 2018, and the Court issued its judgment early Monday morning, December 10. 
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viewpoints

The PTAB recently published the first update to its 2019 study of AIA trials involving petitions challenging Orange Book-listed patents and biologic patents through June 2021. Highlights of these pharmaceutical patent challenge statistics include, e.g., the number of these petitions filed, the number of instituted trials, and the trial outcomes since fiscal year 2013.
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See the guidelines on the procedural aspects of filing a motion to amend claims.
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
In inter partes review (IPR) proceedings, the PTAB will often uphold the validity of dependent claims despite finding the independent claim invalid.  Dependent claims recite additional limitations that must be separately accounted for in the prior art references in the Petitioner’s asserted grounds.
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Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. 
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The expert declaration provides a unique opportunity for Patent Owners to bolster their case during the discovery period of an inter partes review (“IPR”) proceeding. We previously detailed how to effectively use an expert declaration in the Patent Owner’s Preliminary Response (“POPR”). Now we turn to maximizing your expert’s testimony for the Patent Owner’s Response (“POR”).
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The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) recently grappled with the admission into evidence of expert deposition testimony that was presumably harmful to the petitioner in an inter partes review (IPR), and barred the testimony from coming into evidence. 
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On November 5, 2020, the United States Court of Appeals for the Federal Circuit, in Valeant Pharmaceuticals N. Am. LLC v. Mylan Pharmaceuticals Inc., No. 19-2402, resolved a split among district courts over what constitutes “acts of infringement” sufficient to support venue in the context of a Hatch-Waxman litigation.  
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On May 8, 2020, the Court of Appeals for the Federal Circuit affirmed the District of Delaware’s application of the disclosure-dedication doctrine in granting a motion for judgment on the pleadings in Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC, No. 19-1924. 
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Mintz is recognized as among the top ten firms in ITC Section 337 litigation by Patexia in its inaugural "ITC Intelligence Report". We are pleased to be among the firms included in this publication and thrilled that it has come on the heels of a great year at the ITC for the Mintz team.
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News & Press

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BOSTON- Mintz has once again been recognized as one of the most active and high-performing International Trade Commission (ITC) law firms in the Patexia 2024 ITC Intelligence Report. 

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Law360 published an article written by Members Michael RenaudMarguerite McConihe, and Associate Nana Liu analyzing potential intellectual property risks companies should consider when utilizing AI tools.

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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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Recognition & Awards

  • Ranked by Patexia among the Most Active ITC Attorneys Representing Complainants (2024)

  • Ranked by Patexia among the Best Performing ITC Attorneys Representing Complainants (2024)

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Involvement

  • Volunteer, Civil Appeals Clinic, Volunteer Lawyers Project of the Boston Bar Association
  • Volunteer, New England Legal Foundation
  • Mentor, Minds Matter Boston
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