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Sandra J. Badin

Special Counsel

[email protected]

+1.617.348.1604

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Sandra Badin focuses her patent practice on appeals before the Federal Circuit and high-priority motions in the federal district courts and the U.S. International Trade Commission.  She has represented clients in many different technology fields with patents covering radio frequency transceivers, graphics processing units, LCD displays, medical records processing systems, electronic point-of-sale systems, high-density plasma cutting torches, dental materials and processes, specialty fabrics, and financial and business methods.  Sandra crafts winning appellate briefs and dispositive motions by translating complex technical information into simple, clear prose lay readers can understand, and by presenting difficult, fact-intensive arguments cogently and persuasively. 

Sandra also maintains an active pro bono practice.  She serves as co-chair of the Amicus Committees of both the Boston Patent Law Association and the Women’s Bar Association and has co-authored amicus briefs to the United States Supreme Court and state supreme courts across the country on behalf of non-profit organizations including the ACLU, the ASPCA, the BPLA, the National Network to End Domestic Violence, the American Jewish Congress, the Anti-Defamation League, and US Inventor, Inc.

While in law school, Sandra held an Edmond J. Safra Graduate Fellowship in Ethics at Harvard University’s Kennedy School of Government, and served as a judicial extern to Justice Lorene B. Ferguson of the Navajo Nation Supreme Court.  She also served as a teaching assistant to Professors Frank Michelman, Alan Dershowitz, Stephen J. Gould, and Heather Gerken, as a research assistant to several of her professors, and as a senior thesis adviser to undergraduates in the Government and Social Studies Departments at Harvard College.

Education

  • Harvard Law School (JD)
  • Columbia University (MPhil)
  • York University (MA)
  • University of Toronto (BA)

Experience

Federal District Court

  • Polartec LLC, et al. v. Lamour Global, Inc. (D. Mass.) – Defended patent infringement action involving patents covering fleece fabric. Case settled on favorable terms.
  • Cardsoft (Assignment for the Benefit of Creditors), LLC v. The Gores Group, LLC, et al. (E.D. Texas) – Defended patent infringement action involving patents related to electronic point-of-sale systems. Case settled on favorable terms.
  • Briefed and won an appeal in the Federal Circuit on behalf of a major provider of medical records systems; the appeals court summarily affirmed the trial court’s dismissal of the case on the grounds that the claims of the asserted patent were drawn to ineligible subject matter. 
  • Briefed and won an appeal in the Federal Circuit on behalf of the owner of a portfolio of voice-over-IP patents; the appeals court affirmed the Patent Trial and Appeal Board’s determination that the patents at issue were not invalid.  
  • Briefed and won an appeal in the Federal Circuit seeking vacatur of the Patent Trial and Appeal Board’s determination that the patents at issue were obvious in light of prior art; the appeals court held the Board’s determination was based on the wrong claim construction and vacated the Board’s decision on that basis.  
  • Briefed and won many dispositive and other high-priority motions including motions challenging personal jurisdiction, standing, and venue; discovery motions seeking to compel the production of documents and to quash or limit subpoenas; motions for summary judgment on issues of infringement, validity, and domestic industry; and Daubert and other evidentiary motions.

Involvement

  • Co-Chair, Amicus Committee, Boston Patent Law Association
  • Co-Chair, Amicus Committee, Women's Bar Association
  • Member, Federal Circuit Bar Association
  • Member, American Intellectual Property Law Association
  • Member, Boston Intellectual Property Inn of Court
  • Member, Boston Bar Association

Recent Insights

News & Press

Viewpoints

Viewpoint General
Recently, in Godo Kaisha IP Bridge 1 v. TCL Commc’n Tech. Holdings Ltd., the Delaware District Court awarded the prevailing plaintiff in a patent infringement suit an ongoing royalty that covers not only the products adjudicated to infringe but also non-adjudicated products that were “not colorably different” from the adjudicated products.  The court noted that the patent claims asserted by the plaintiff, IP Bridge, were found to be essential to the LTE standard because LTE phones do not operate on the LTE network without infringing the asserted claims. 
Viewpoint General

Commission Reverses Apple Infringement Finding, Thereby Mooting the Public Interest Inquiry...For Now

March 27, 2019 | Blog | By Michael Renaud, James Wodarski, Sandra Badin, Rithika Kulathila

Yesterday afternoon, the International Trade Commission issued its Final Determination in Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065. The 1065 Investigation is one of several actions Qualcomm has brought against Apple both here and abroad.
Viewpoint General

FRAND Licensing of Global Portfolios – Who Gets to Set Worldwide Rates?

March 26, 2019 | Blog | By Michael Renaud, James Wodarski, Sandra Badin

A key issue in the licensing of standard essential patents (SEPs) is whether national courts have jurisdiction to determine what constitutes a global fair, reasonable, and non-discriminatory (FRAND) license rate.  The Court of Appeal in England recently held that its patent courts have such jurisdiction.  In Huawei Technologies Co. Ltd. v Conversant Wireless Licensing SARL, the Court of Appeal affirmed the jurisdiction of the High Court of Justice to try a claim for the infringement of UK-designated European SEPs against Chinese as well as English defendants and to issue an injunction for the unauthorized use of the SEPs at issue.  In the process, it also affirmed the High Court’s jurisdiction to determine a worldwide FRAND rate. 
Viewpoint General

Designing Around a Monopoly: the Public Interest Dispute between Qualcomm and Apple Takes a New Turn

March 12, 2019 | Blog | By Michael Renaud, James Wodarski, Sandra Badin, Matthew Galica

As we mentioned in December, the International Trade Commission issued a notice to review the Final Initial Determination and Recommended Determination issued by Administrative Law Judge Pender in Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065 (“Certain Mobile Electronic Devices”), in which, despite finding that a valid patent was infringed and all jurisdictional requirements met, ALJ Pender had recommended that no exclusion order be issued against Apple because such an order would be contrary to the public interest.

The Patent Act Allows for Full Compensation for All Forms of Infringement

June 22, 2018 | Blog | By Michael Renaud, James Wodarski, Sandra Badin

Patent owners have a new arrow in their quiver. The Supreme Court has held that patent owners can recover foreign lost profits for the use or sale of infringing products abroad if the products were assembled from components of the patented invention exported from the United States.

Chat with the Chief on SAS Institute

May 4, 2018 | Blog | By Michael Renaud, Sandra Badin, Inna Dahlin

As we noted in our blog post last week, the USPTO held its “Chat with the Chief on SAS” webinar on April 30, 2018, to advise the public on the implications of the Supreme Court’s opinion in SAS Institute for practice before the Board going forward.

Two Supreme Court Patent Opinions and a Memo from the PTO

April 27, 2018 | Blog | By Michael Renaud, James Wodarski, Sandra Badin, Chris Duerden, Anthony Faillaci

On Tuesday, the U.S. Supreme Court issued two important patent law opinions that relate to the inter partes review procedure introduced by the America Invents Act: Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, which upholds the constitutionality of inter partes review, and SAS Institute, Inc. v. Iancu, which requires the Patent Trial and Appeal Board to adjudicate the validity all patent claims challenged in a petition for inter partes review if the Board decides to adjudicate the validity of any claim challenged in that petition.

Software is Still Patent Eligible

February 16, 2017 | Advisory | By Michael Van Loy, Michael Renaud, Sandra Badin, Matthew Karambelas, Nicholas Mouton

In recent years, software patents have come under fire from legislation (the American Invents Act) that has generally made patents easier to invalidate, and from court decisions (the Supreme Court’s decision in Alice v. CLS Bank1 and its progeny) that have made computer-implemented inventions more vulnerable to subject matter eligibility challenges.

Intellectual Ventures Petitions Federal Circuit for Full Court Review

November 18, 2016 | Blog | By Michael Renaud, Sandra Badin, Matthew Karambelas

Earlier this week, Intellectual Ventures (IV) petitioned the full Federal Circuit to review the panel opinion in Intellectual Ventures v. Symantec, which invalidated two of its patents under section 101.  Both patents—the ’050 and the ’610—are directed to filtering email or file content.

Supreme Court Makes it Harder for Willful Infringers to Escape Punishment

June 15, 2016 | Blog | By Michael Renaud, Rich Gervase, Sandra Badin

The Supreme Court has made it easier for patent owners to prove willful infringement and entitlement to enhanced damages.

News & Press

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.
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.
Division Head of the firm’s IP Section Michael Renaud and Special Counsel Sandra Badin authored this Massachusetts Lawyers Journal column on the recent decisions to opt out of standards-setting patent policy introduced by the Institute of Electrical and Electronics Engineers’ (IEEE).
Mintz Members Michael Renaud and James Wodarski and Sandra Badin, Special Counsel and Appellate attorney, authored an Intellectual Asset Magazine column on how U.S. owners of standard-essential patents must be creative in their strategizing to protect the value of their rights.
This 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.