Bill has mastered the complexities of inter partes review (IPR) proceedings and high-stakes patent litigation. Bill has helped patent owners achieve success in more than 90% of IPRs, compared to the industry average of only 35%. In addition, at the Federal Circuit Court of Appeals, he also achieved the first complete reversal and remand of an IPR decision against a patent owner. Bill also has over 20 years of experience litigating patent cases, both in district courts throughout the United States and before the International Trade Commission.
Bill handles all types of intellectual property disputes, with a particular emphasis on patent infringement litigation, inter partes reviews, and other matters related to the enforcement of intellectual property rights. He has litigated intellectual property cases in District Courts throughout the United States, including the Eastern District of Virginia, Northern and Southern Districts of California, Eastern District of Texas, District of Massachusetts, District of Delaware, Northern District of Ohio, and Middle District of North Carolina.
With more than 18 years of experience, Bill counsels clients in all phases of patent litigation, from initial counseling through trial and appeal. He has extensive experience leading litigation teams to resolve patent infringement disputes in a diverse array of technology areas such as internet services and systems; computer hardware and software; mobile systems and applications; medical devices and services; biotechnology; mechanical devices and manufacturing; sports equipment; and toys and novelties. In addition, his practice encompasses representing clients in cases involving copyrights, trademarks, trade secrets, unfair competition, and patent-related antitrust issues.
Prior to joining Mintz, Bill was a partner at a national law firm.
Education
- The John Marshall Law School (JD, summa cum laude, Order of the Coif)
- Tufts University (BS, Mechanical Engineering)
Experience
- Successful Defense of 12 IPRs – Three dimensional structure memory - Mintz Levin represented Elm 3DS Innovations in a series of 14 IPRs filed by leading technology companies, including SK Hynix, Micron, and Samsung. We were hired as replacement counsel following institution of the IPRs which had been filed in late 2015 and early 2016. Final Written decisions in 13 of the proceedings were received in June and August 2017 and confirmed validity of all but two challenged claims.
- Victory at CAFC: PTAB Decision Reversed and Remanded - Represented Straight Path IP in successfully appealing to the Court of Appeals of the Federal Circuit (CAFC) the adverse result of an inter partes review handled by another firm. The IPR decision cancelled all challenged claims of Straight Path’s US Patent No. 6,108,704. In the Straight Path IP Group, Inc. v. Sipnet EU SRO appeal, the CAFC for the first time completely reversed an adverse IPR decision, remanding the matter for further proceedings under the correct construction advocated by Mintz Levin and Straight Path.
- Lead attorney in the defense against seventeen inter partes reviews, including petitions filed by Samsung Electronics Co., Ltd.; Cisco Systems, Inc.; Avaya Inc.; LG Electronics, Inc.; Toshiba Corp.; VIZIO, Inc.; Hulu, LLC; and FedEx
- Certain Graphics Systems, Components Thereof, and Consumer Products Containing the Same (337-TA-1044) - Represented Advanced Micro Devices (AMD) as complainant in the ITC asserting patents covering graphics processing technology employed by smart devices such as televisions and handsets. Respondents include LG Electronics, VIZIO, MediaTek, and Sigma Designs, Inc. (SDI). Achieved settlement with LG prior to the conclusion of expert discovery. Following the evidentiary hearing, the presiding ALJ issued an initial determination finding a violation of Section 337 and recommending the imposition of an exclusion order against the remaining Respondents’ accused products. The ITC affirmed the ALJ’s finding of a violation on August 22, 2018. As a result, the Commission issued orders banning the importation of products made by VIZIO, MediaTek, and SDI and cease and desist orders against VIZIO and SDI, subject to a 60-day presidential review period.
- Certain Computing or Graphics Systems, Components Thereof, and Vehicles Containing Same (337-TA-984) - Represented owner of portfolio of graphics processing and microprocessor patents as Complainant in an ITC investigation adverse to a number of automotive manufacturers, and infotainment system and chip suppliers. Respondents include Honda, Toyota, BMW, Audi, Volkswagen, NVIDIA, Texas Instruments, Renesas, Harman International, and Fujitsu-Ten. The investigation instituted in January of 2016 and resolved favorably prior to the conclusion of expert discovery in August of 2016.
Recognition & Awards
- Order of John Marshall; First in graduating class
- Managing Intellectual Property: Patent star - Massachusetts (2018)
Recent Insights
Viewpoints
News & Press
A team of Mintz Levin attorneys has successfully defended two separate Inter Partes Reviews (IPRs) challenging the validity Infobridge PTE LTD.’s U.S. Patent No. 8,917,772 (“’772 Patent”).
This article notes that the Patent Trial and Appeal Board (PTAB) has denied Samsung’s request to challenge a patent it has been accused of infringing – resulting in a final win in a series of victories for Mintz client, Elm 3DS Innovations.
Viewpoints
Precedential PTAB Panel Says Petitioners Can Join Their Own Earlier-Filed IPRs and Join New Issues in Limited Circumstance
March 19, 2019 | Blog | By William Meunier, Brad M Scheller, Vincent Ferraro, Rithika Kulathila
In its first decision since its inception, the Precedential Opinion Panel (“POP”) for the U.S. Patent Trial and Appeal Board (“Board”), in Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00914, held that under 35 U.S.C. § 315(c) the Board has discretion to allow a party, in limited circumstances, to join its own earlier-filed inter partes review (“IPR”) and join new issues, even if the party was otherwise time-barred under 35 U.S.C. § 315(b). Specifically, the Board may use this discretion only where fairness requires it and to avoid undue prejudice to a party. The POP nevertheless denied Proppant Express Investments LLC’s (“Petitioner”) motion for joinder as Petitioner’s motion was “a result of Petitioner’s errors,” and therefore did not fall within the limited circumstances it envisioned.
PTAB Finds that Allowing IPR Petitioner to Avoid a Statutory Bar by Retroactively Adding Missing Real Party in Interest Is “In the Interest of Justice”
February 8, 2019 | Blog | By William Meunier, Daniel Weinger, Courtney Herndon
Recently, in ZTE (USA) Inc. v. Fundamental Innovation Int’l LLC, IPR2018-00425, Paper No. 34 (Feb. 6, 2019), the Patent Trial and Appeal Board (“PTAB”) allowed Petitioner’s motion to retroactively correct its defective IPR petition to identify a previously undisclosed real party in interest and thereby avoid a mandatory statutory bar.
“A New Day” for Amending Claims in Post-Grant Proceedings
October 29, 2018 | Blog | By William Meunier, Daniel Weinger, Matthew Galica
U.S. Patent and Trademark Office Director, Andrei Iancu, recently gave a speech to the American Intellectual Property Law Association where he discussed a new rule proposal aimed at improving the patent amendment process during post-grant proceedings. Specifically, he informed the audience—and patent practitioners, generally—that the USPTO “will formally publish a notice seeking comments on a new claim amendment process for post grant proceedings.” The stated purpose of the proposed rule change is to “ensure balance” in post-grant proceedings by making the amendment process “feasible and meaningful” for the owners of challenged patents.
AQUA PRODUCTS: The Federal Circuit Shifts The Burden of Proof On Amending Claims During An IPR From The Patent Owner To The Petitioner
October 5, 2017 | Blog | By Michael Renaud, William Meunier, Michael Newman, Matthew Galica
The United States Court of Appeals for the Federal Circuit’s recent decision in Aqua Products Inc., v. Matal materially changes the burden of proof associated with the patentability of amended claims during an inter partes review (“IPR”), shifting the burden from the Patent Owner seeking the amendment to the IPR Petitioner opposing it.
Federal Circuit Puts the Brakes on PTAB Final Written Decision For Procedural APA Violation
June 28, 2017 | Blog | By William Meunier, Peter Cuomo
In EmeraChem Holdings LLC v. Volkswagen Group of Am. Inc., the Federal Circuit reminded the PTAB that it must abide by the APA’s requirements of adequate notice and an opportunity to respond when conducting a post-grant review.
Federal Circuit Clarifies Scope of Covered Business Method Review
February 27, 2017 | Blog | By William Meunier, Tiffany Knapp
The Federal Circuit has further clarified the scope of the covered business method (CBM) review program under the America Invents Act (AIA), explaining in Secure Axcess, LLC. v. PNC Bank National Association that in order for patent to be a CBM patent, it is not enough that the claimed subject matter may be used in a financial activity.
PTAB Provides A Possible Roadmap For Patent Owners To Successfully Argue Secondary Considerations Of Nonobvious
February 1, 2017 | Blog | By William Meunier, Patrick Driscoll
For just the third time ever, the Patent Trial and Appeals Board (“PTAB” or the “Board”) recently sided with a Patent Owner in an inter partes review (“IPR”) to find that evidence of secondary considerations of non-obviousness compelled rejection of the Petitioner’s invalidity challenges.
Losing IPR Petitioners May Lack Standing To Appeal
January 17, 2017 | Blog | By Michael Renaud, William Meunier
When the Patent Trial and Appeal Board issues a final written decision finding against an IPR Petitioner, can that Petitioner necessarily appeal that adverse decision? In a case of first impression, the Federal Circuit recently answered “no.”
The Federal Circuit Confirms That It Will Review PTAB’s CBM Determinations … To A Certain Extent
December 2, 2016 | Blog | By William Meunier, Serge Subach
The Federal Circuit has again addressed which types of patents are eligible for Covered Business Method (“CBM”) review before the Patent Trial & Appeals Board.
PTAB’s Definition of CBM Patent is Wrong and Too Broad, Federal Circuit Says
November 23, 2016 | Blog | By William Meunier
The America Invents Act (“AIA”) mandates that a Covered Business Method Review is available only for challenging the validity of covered business method patents.
News & Press
Mintz Secures Victory for Infobridge as Patent and Trial Appeal Board Finds that Samsung Fails to Prove Unpatentability
April 25, 2018
A team of Mintz Levin attorneys has successfully defended two separate Inter Partes Reviews (IPRs) challenging the validity Infobridge PTE LTD.’s U.S. Patent No. 8,917,772 (“’772 Patent”).
PTAB Uses Recent Precedent In Backing Elm Over Samsung
October 19, 2017 | Law360
This article notes that the Patent Trial and Appeal Board (PTAB) has denied Samsung’s request to challenge a patent it has been accused of infringing – resulting in a final win in a series of victories for Mintz client, Elm 3DS Innovations.
Mintz Secures Sweeping Win for Elm 3DS Innovations at U.S. Patent Trial and Appeal Board
August 29, 2017
A team of Mintz attorneys has successfully defended 105 of 107 patent claims across 14 instituted Inter Partes Reviews in a series of decisive wins for client Elm 3DS Innovations, LLC.
3 Tips For Managing Your Cases At The PTAB
August 17, 2017 | Law360
Bill Meunier, an Intellectual Property Member in the Boston office, was quoted in a Law360 article emphasizing the importance of knowing and adhering to best practices for America Invents Act reviews at the PTAB.
Mintz Scores Decisive Win for Straight Path Before U.S. Court of Appeals for the Federal Circuit
June 29, 2017
The U.S. Court of Appeals for the Federal Circuit found decisively in favor of Mint and client Straight Path IP Group, Inc. in a long-fought battle over three of the licensing firm’s patents. The court upheld a prior 2016 decision by the Patent Trial and Appeal Board.
Mintz attorneys have saved sixty-three of sixty-five challenged patent claims across eight patents in a series of sweeping Inter Partes Review victories for their client, Elm 3DS Innovations, LLC, victories that may pave the way to Elm prevailing in other pending invalidity challenges.
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.
This article notes that the Patent Trial and Appeal Board has upheld the validity of two Straight Path patents in Samsung Electronics Co. Ltd.’s review.
LG, Hulu Tell PTAB Fed Circ. Erred in Reviving Network IP
February 9, 2016
Mintz Members Bill Meunier and Mike Newman are mentioned in this Law360 article on a challenge to the Federal Circuit’s revival of a Straight Path IP Group patent brought to the Patent Trial and Appeals Board by LG, Hulu, and others.