Serge’s intellectual property practice focuses on patent litigation. His experience spans broad technical fields including software, consumer electronics, and medical devices.
Before joining Mintz, Serge worked for TomTom, Inc., where he interfaced between product management and engineering departments in coordinating beta testing of both software and hardware products.
During law school, Serge served as President of the Intellectual Property Law Association and as Managing Business Editor of the New England Journal on Criminal Civil Confinement.
Education
- New England Law (JD, cum laude)
- Northeastern University (BS, Mechanical Engineering)
Experience
International Trade Commission
- Certain Thermoplastic-Encapsulated Electric Motors, Components Thereof, and Products and Vehicles Containing Same (337-TA-1052) – Currently representing complainant in this ITC investigation, and in parallel Federal District Court cases.
- Certain Communications or Computing Devices and Components Thereof (337-TA-925) - Represented owner of portfolio of communications and computing patents from former enterprise communications business unit of large multinational innovation company, Enterprise System Technologies, S.A.R.L. An ITC investigation was instituted in August 2014 as to respondent entities Apple, Samsung Electronics, LG Electronics and HTC Corporation. Google participated as an intervenor. The investigation resolved prior to evidentiary hearing in June of 2015.
- Certain Consumer Electronics with Display and Processing Capabilities (337-TA-884) - Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC. Investigation was instituted in June 2013 and among the respondent entities were Panasonic, Toshiba, Vizio, and ZTE. Most respondents settled. After an evidentiary hearing held over several days in May 2014, on August 29, 2014 Mintz successfully obtained a recommendation for a Limited Exclusion Order against the remaining respondent, which chose to settle while Commission review of the Administrative Law Judge’s Initial Determination was pending.
Inter Partes Reviews
- Represented Petitioners SL Corporation and Hyundai Motor America, Inc., in two inter partes review proceedings challenging the validity of a patent directed to automatic adjustment of automotive headlights based on signals from inertial sensors and/or potentiometers. The PTAB invalidated all challenged claims in the patents. IPR2016-00193, IPR2016-00079
Languages
- Russian
Recent Insights
Viewpoints
Filling the Hole with Common Sense: When Evidentiary Support is Adequate
July 6, 2020|Blog
News & Press
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.
Mintz announced a pair of victories before the Patent Trial and Appeal Board on behalf of SL Corporation and Hyundai Motor America, Inc. against Adaptive Headlamp Technologies, Inc.
Viewpoints
Filling the Hole with Common Sense: When Evidentiary Support is Adequate
July 6, 2020 | Blog | By Peter Cuomo, Serge Subach
The Federal Circuit recently reaffirmed a case where common sense was used to supply a missing element in a § 103 obviousness analysis. On June 26, 2020, the Federal Circuit issued a decision in B/E Aerospace, Inc. v. C&D Zodiac, Inc., Nos. 2019-1935, 2019-1936 (Fed. Cir. Jun. 26, 2020) (“B/E Aerospace”) affirming a Patent Trial and Appeal Board (“PTAB”) final written decision finding patent claims invalid in view of a combination of prior art and common sense.
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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”).
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Better Early Than Never: PTAB Confirms Willingness to Deny Institution In Light of Advanced State of Parallel Litigation
May 18, 2020 | Blog | By Michael Renaud, Daniel Weinger, Serge Subach
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.
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PTAB’s Decision Providing Factors for Denying Institution Based on Close Trial Date is Precedential; PTAB De-Designates One-Year Time Bar Decision
May 7, 2020 | Blog | By Daniel Weinger, Serge Subach
On May 5, 2020, the Patent Trial and Appeal Board (“PTAB”) designated one decision as precedential and removed the precedential designation on another. The newly-designated precedential opinion lays out factors that the PTAB considers when asked to exercise its discretion to deny institution in light of an imminent trial.
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SCOTUS holds that PTAB Time-Bar Determinations are Not Reviewable on Appeal
April 22, 2020 | Blog | By Michael Newman, Serge Subach, Rithika Kulathila
On Monday, in Thryv, Inc. v. Click-to-Cal Technologies, the Supreme Court held that § 315(b) time-bar determinations are not subject to judicial review. In this 7-2 decision penned by Justice Ginsburg, with Justices Gorsuch and Sotomayor dissenting, the Court determined that time-bar determinations are unreviewable because they are “closely tied” to the Director’s decision to institute an inter partes review (IPR).
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Mintz Rings in 2020 with Top 10 Recognition for ITC Practice
January 6, 2020 | Blog
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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Means-Plus-Function Structure – Can It Be Incorporated by Reference?
December 18, 2019 | Blog | By Peter Cuomo, Serge Subach
In its recent decision, Fiber, LLC. v. Ciena Corp., No. 2019-1005 (Fed. Cir. Nov. 21, 2019), the Court of Appeals for the Federal Circuit (Federal Circuit) issued a reminder that the structure necessary to satisfy the definiteness requirement for a means-plus-function in a claim cannot normally be found in material incorporated by reference.
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Relying on Outside Prior Art in an IPR – Not so fast!
December 10, 2019 | Blog | By Daniel Weinger, Serge Subach
The Court of Appeals for the Federal Circuit (CAFC) has recently reminded the Patent Trial and Appeal Board (the Board) that it may not rely on evidence and arguments that fall outside the scope of the instituted grounds during Inter Partes Review (IPR) proceedings. In re IPR Licensing, Inc., No. 2018-1805 (Fed. Cir. Nov. 22, 2019).
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Alexa: What is venue?
August 23, 2019 | Blog | By Andrew DeVoogd, Serge Subach
A recent decision from the Northern District of New York provides a detailed outline for analyzing venue in patent infringement cases, and may provide facts that companies with equipment installed in other districts should understand.
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Performing a Service without Selling the Process Still Triggers the On-Sale Bar
May 24, 2019 | Blog | By Daniel Weinger, Will Perkins, Serge Subach
Services play a large role in today’s economy, and it is important to be mindful of how certain pitfalls that apply to product-based intellectual property rights also apply to method or process-based intellectual property (“IP”) rights. For example, the “on-sale bar” invalidates a patent on a product where a sale or offer to sell the product occurred more than a year prior to filing for a patent.
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News & Press
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.
Mintz Triumphs for SL Corporation and Hyundai Motor America, Inc. Before the Patent Trial and Appeal Board
March 16, 2017
Mintz announced a pair of victories before the Patent Trial and Appeal Board on behalf of SL Corporation and Hyundai Motor America, Inc. against Adaptive Headlamp Technologies, Inc.