Serge focuses his practice on intellectual property litigation, including the assertion and defense of infringement claims, where he has experience in every phase of trials and appeals. He has represented companies in matters before US District Courts and the International Trade Commission. As a registered patent attorney, he is also licensed to practice before the United States Patent and Trademark Office and the Patent Trial and Appeal Board. Serge has delivered results for both patent owners and patent challengers in a variety of technology areas, including network devices, semiconductors, consumer electronics, automotive, and software.
In addition to litigation, Serge provides product analyses, enforcement advice, strategic defense, risk assessment, evaluates infringement and validity issues, and due diligence work. He has provided valuable guidance to companies in a number of industries, including automotive, medical devices, alternative energy such as solar and wind, traditional energy such as oil and gas, and consumer products.
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.
Experience
International Trade Commission
- 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 Thermoplastic-Encapsulated Electric Motors, Components Thereof, and Products and Vehicles Containing Same (337-TA-1052, -1073) – Represented owner of an innovative electric motor patents with wide applications in the automotive industry, and in related 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.
Federal District Court
- Netlist Inc. v. SK hynix Inc., et al., 6:20-cv-194, 6:20-cv-525 (W.D. Tex.) – Represented Netlist, Inc. in asserting multiple patents essential to JEDEC DDR4 RDIMM and LRDIMM standards against the Korean-based memory company SK hynix in the Western District of Texas. The WDTX case was the capstone of a years-long representation of Netlist adverse to SK hynix, across two ITC Investigations, two cases in the Central District of California, multiple IPRs before the PTAB, and multiple trips to the Federal Circuit. After successfully persuading the Federal Circuit on mandamus that Judge Albright in WDTX did not err in denying SK hynix’s motion to transfer the case to California, and after running the table on all disputed claims after a Markman hearing, Mintz leveraged a successful global settlement for Netlist, which received from SK hynix a $40 million license payment and a supply commitment worth $600 million in preferred access to DRAM components in a constrained market.
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
viewpoints
The Prevailing Winds of Public Interest: Tailoring Injunctive Relief in Patent Litigation Through Carve Outs
December 7, 2022 | Blog | By Andrew DeVoogd, Gabriella Flick, Serge Subach
Fintiv in Decline?
February 17, 2022 | Blog | By William Meunier, Brad M Scheller, Serge Subach
Going forward, parties litigating before the PTAB should consider the Fintiv factors comprehensively rather than zeroing-in on the procedural schedule in their parallel litigation. As the data suggests, an aggressive and fast-moving schedule alone may no longer result in a discretionary institution denial.
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Nonobviousness of Commercially Successful Designs: Mmm, Mmm, Not So Fast
August 31, 2021 | Blog | By Adam Samansky, Peter Cuomo, Serge Subach
Tip #4 for Avoiding IPR Institution: Don’t Argue Facts
November 9, 2020 | Blog | By Brad M Scheller, Serge Subach
We’ve previously written that the best defense to an IPR challenge is avoiding IPR institution altogether. In addition to the other tips discussed in this series of posts, another strategy for avoiding institution is focusing the Patent Owner’s Preliminary Response (“POPR”) on areas where the Petitioner failed to adequately support its argument.
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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.
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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
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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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.
Recent Insights
Fintiv in Decline?
February 17, 2022 |Blog
