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.
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