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Serge Subach

Associate

[email protected]

+1.617.348.1846

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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.

Education

  • New England Law (JD, cum laude)
  • Northeastern University (BS, Mechanical Engineering)

Languages

- Russian

Recent Insights

News & Press

Viewpoints

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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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The FUCT Mark: Is the Prohibition on Scandalous Marks Unconstitutional?

March 14, 2019 | Blog | By Susan Neuberger Weller, Adam Samansky, Serge Subach

The constitutionality of yet another portion of Section 2(a) of the Lanham Act will soon be determined. Following in the footsteps of the blockbuster decision in Matal v. Tam, 137 S. Ct. 1744 (2017) (“Tam”), the U.S. Supreme Court granted certiorari to Iancu v. Brunetti on January 4, 2019. In Matal v. Tam, the Supreme Court held that the prohibition in Section 2(a) of the Lanham Act against registering disparaging trademarks at the U.S. Trademark Office (“USPTO”) was an unconstitutional restriction on free speech. However, Section 2(a) also prohibits the registration of other categories of marks, including marks that are immoral and scandalous. It is the constitutionality of this prohibition which is at issue in Brunetti.
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§102(b) Printed Publication: Unrestricted Distribution at a Trade Show

November 5, 2018 | Blog | By Andrew DeVoogd, Serge Subach

The U.S. Court of Appeals for the Federal Circuit opinion issued on November 1, 2018 clarifies the standard for a document to qualify as a “printed publication” under pre-AIA 35 U.S.C. §102(b) and reversed an earlier Patent Trial and Appeal Board (“PTAB”) decision.1 Specifically, the requirement that a reference be “publicly available” is not as narrow as the PTAB had interpreted. The Court held that “the standard for public accessibility [of an alleged prior art reference] is one of reasonable diligence, to locate the information by interested members of the relevant public.”
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ITC Provides Clarity on the Meaning of a Section 337(a)(2) “Article”

October 31, 2018 | Alert | By Michael Renaud, James Wodarski, Marguerite McConihe, Serge Subach

This article examines a recent International Trade Commission decision that opens up the ITC to complainants in an earlier phase of product development.
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Apple and Samsung Are Headed Back to the Court Room

October 25, 2017 | Blog | By Andrew DeVoogd, Serge Subach

Following a lengthy and extensive litigation that began in 2011 that culminated in a U.S. Supreme Court decision in December of 2016, smartphone industry titans Apple and Samsung will again find themselves in Federal District Court Judge Lucy Koh’s courtroom on remand to determine appropriate damages for Samsung’s infringement of Apple’s design patents.
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Patent Litigation Venue: Supreme Court Clarifies Venue Statutes in TC Heartland v. Kraft Foods.

May 24, 2017 | Blog | By Matthew Hurley, Brad M Scheller, Serge Subach

The U.S. Supreme Court announced its ruling in TC Heartland v. Kraft Foods Group Brands LLC on May 22, 2017, a patent infringement case that has garnered national attention for its implications on venue.
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On Monday, March 27, 2017, the U.S. Supreme Court heard oral argument in TC Heartland v. Kraft Foods Group Brands LLC, a case that could have a profound impact on where patent infringement cases may be litigated.
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The Federal Circuit has again addressed which types of patents are eligible for Covered Business Method (“CBM”) review before the Patent Trial & Appeals Board.
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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 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.