Recognized as one of the “Best Lawyers In America” for patent litigation, Bill has mastered the complexities of high-stakes patent litigation, inter partes review (IPR) proceedings, and appeals.
Bill is consistently recognized as a top IPR practitioner in Patexia’s annual survey, and he has helped patent owners achieve success at a rate roughly double that of the industry average. He also obtained the first complete reversal and remand of an IPR decision against a patent owner at the Federal Circuit Court of Appeals.
In addition, Bill has more than 25 years of experience of successfully litigating patent cases, in district courts throughout the United States, before the Court of Appeals of the Federal Circuit, and at the International Trade Commission. He counsels clients in all phases of patent litigation, from initial counseling through trial and appeal, and he has extensive experience leading litigation teams to resolve patent infringement disputes in a diverse array of technology areas such as semiconductor devices and fabrication; 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. 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.
Experience
Inter Partes Reviews
- Koninklijke Philips N.V. and Philips North America LLC, IPR2021-327, -328, -370, -495, -496, -497, -498, -547 - Currently representing Philips in defending eight IPR petitions filed by TCL Communications and Intel Corporation. The petitions were filed in response to enforcement litigation filed by Mintz on behalf of Philips at the International Trade Commission and in District Courts. The Patent Trial and Appeal Board denied institution to all five petitions filed by TCL and one of the three petitions filed by Intel. The remaining two Intel IPRs are active.
- Interdigital VC Holdings, IPR2021-00102 – Currently representing Interdigital to defend one of its video encoding and decoding patents against an IPR petitions filed by Unified Patents LLC.
- GE Video Compression LLC, IPR2019-00726 – Successfully represented GE Video Compression in defending its HEVC standard essential patent against an IPR Petition filed by Unified Patents. Inc. PTAB denied institution of the petition.
- Shopify Inc., IPR2018-01011, -01012, -01014 - Successfully represented Shopify as petitioner to invalidate claims of three patents related to characteristics of e-commerce platforms asserted by DDR in the District of Delaware. Mintz then briefed and argued the issues before the Federal Circuit which affirmed the PTAB's invalidity findings.
- Infobridge PTE Ltd., IPR2017-00099, -100 – Successfully represented Infobridge in both the PTAB and the Court of Appeals of the Federal Circuit against two IPR Petitions and appeals by Samsung Electronics Co., Ltd, resulting in a remand in which the PTAB recently issued final written decisions upholding the validity of Infobridge’s challenged claims.
- Elm 3DS Innovations LLC, IPR2016-00386, -387, -388, -390, -391, -393, -394, -395, -687, -691, -708, -770, -786 – Successfully represented Elm 3DS in a series of 14 IPRs filed by leading technology companies, including SK Hynix, Micron, and Samsung. After taking over the defense after PTAB instituted each IPR, Bill and Mintz convinced PTAB to reverse its initial positions, ultimately saving 105 of 107 challenged claims across 11 different Elm 3DS integrated circuit patents. Bill and Mintz also represented Elm 3DS in the thirteen subsequent appeals, where they likewise convinced the Federal Circuit to uphold each of the PTAB's determinations of patentability.
- ParkerVision Inc., IPR2015-01828, -1829, -1831, -1832, -1833, -1834 – Successfully represented ParkerVision in a series of 6 IPRs filed by Qualcomm against ParkerVision’s U.S. Patent No. 6,091,940 concerning an innovative system for frequency conversion. After taking over the defense after PTAB instituted each IPR, Bill and Mintz convinced PTAB to reverse its initial positions, ultimately winning 4 of the 6 instituted IPRs and saving a significant number of the challenged claims. Bill and Mintz also represented ParkerVision in the subsequent appeals, where they likewise convinced the Federal Circuit to uphold each of the PTAB's determinations of patentability.
- Straight Path IP Group, IPR2014-01366, -1367, -1368, IPR2015-00196, -198, -209, -1006, -1007, -1011, -1014, -1015, -1017, -1397, -1398, -1400, -1406, -1407 – Successfully represented Straight Path in the defense of 17 IPRs filed against three U.S. patents concerning technology for facilitating point-to-point communications over computer networks. Petitioners included Samsung Electronics Co., Ltd.; Cisco Systems, Inc.; Avaya Inc.; LG Electronics, Inc.; Toshiba Corp.; VIZIO, Inc.; Verizon Communications, Inc.; and Hulu, LLC. Bill and Mintz prevailed on all challenged claims and then convinced the Federal Circuit to uphold each of the PTAB's determinations of patentability.
- Innovative Foundry Technologies, IPR2020-00786, -837, -839, -1003 (PTAB) - Successfully represented Innovative Foundry Technologies in defending four of its semiconductor patents against IPR petitions filed by SMIC Americas. PTAB denied two of the petitions and then terminated the other two petitions in light of subsequent settlement.
Federal District Court
- Alexander Orenshteyn v. Citrix (SD Fla - 0:02cv60478) – Won summary judgment of noninfringement and invalidity of patents asserted against a leading remote access provider. Also successfully defended these judgments on appeal to the Federal Circuit and convinced the District Court to enter sanctions against the patent owner and its counsel
- NMT Medical, Inc. et al v. Cardia, Inc. (CAFC, D Minn. - 0:04cv4200) – Convinced the Federal Circuit Court of Appeals to reverse and remand a finding of no infringement against Cardia, a leading medical technology company. Bill then won summary judgment that the defendant’s septal occluder medical device infringed his client’s patent concerning the treatment of heart defect
- Akeva LLC v. Adidas-Salomon AG, et al (ND NC – 1:03cv1207, CAFC) – Won summary judgment of noninfringement in favor of a worldwide athletic equipment company and then successfully defended that judgment on appeal to the Federal Circuit
- Ihance, Inc. v. Eloqua Limited, et al (ED VA – 2:11cv257) – Convinced District Court to dismiss one of two asserted patents against defendant, a marketing automation SaaS company. This dismissal was quickly followed by a settlement of all remaining claims
- IPS Group, Inc., v, Civic Smart, Inc., Duncan Solutions, Inc., and Duncan Parking Technologies, Inc., 17-cv-00632 (SDCA) – Successfully represented the defendants in the District Court for the Southern District of California. Bill and Mintz convinced the Court to dismiss the plaintiff's Lanham Act and unfair trade practices claims. The remaining patent claims settled very favorably after claim construction ruling from Court in defendants’ favor.
- Accolade Systems LLC v. Citrix Systems, Inc., et al (ED TX – 6:07cv48) – Won summary judgment of patent noninfringement in favor of defendant, a remote access and collaboration SaaS company, after the other accused infringers had settled with the plaintiff
International Trade Commission
- Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (337-TA-1222) – Represented DivX, a video codec company headquartered in San Diego, in enforcing patents before the ITC in the District of Delaware. The asserted patents involve innovations relating to digital rights management and streaming media. LG and Samsung settled after the Markman order was issued, leaving TCL as the sole remaining respondent. Shortly after the seven day evidentiary hearing held in July 2021, one of the two principal suppliers of the accused streaming technology to TCL, namely Roku, stepped in and took a license to DivX’s portfolio, thus partially resolving DivX’s claims against TCL. Prior to the court issuing a decision on the merits, DivX and TCL entered into a bilateral settlement agreement resolving DivX’s remaining claims against TCl and bringing an end to all pending litigation.
- Certain Semiconductor Devices, Products Containing the Same, and Components Thereof (II) (337-TA-1177) – Represented GlobalFoundries at the International Trade Commission and in multiple Western District of Texas actions, involving the direct and indirect infringement of four patents related to semiconductor devices, integrated circuits, and products containing the same. Additional defendants in these actions included Apple, Broadcom, Cisco, nVidia, Arista, Asus, and Lenovo. Within 2.5 months of filing at the ITC, the cases settled on favorable terms.
- 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 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.
- Certain Computing or Graphics Systems, Components Thereof, and Vehicles Containing Same (337-TA-984) – Represented owner of portfolio of graphics processing and microprocessor patents, Advanced Silicon Technologies, LLC, 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.
- 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.
Federal Circuit Appeals
- Samsung Electronics Co., Ltd., Micron Technology, Inc., SK Hynix Inc. v. Elm 3DS Innovations, LLC, 2017-2474, 2017-2475, 2017-2476, 2017-2478, 2017-2479, 2017-2480, 2017-2482, 2017-2483, 2018-1050, 2018-1079, 2018-1080, 2018-1081, 2018-1082 (Fed. Cir.) – Successfully represented Elm 3DS Innovations in defending the appeal of highly favorable final written decisions entered by the Patent Trial and Appeal Board (PTAB) in thirteen inter partes reviews. PTAB held that petitioners did not establish the unpatentability of 105 claims across eleven patents, and the Federal Circuit affirmed the PTAB’s decisions.
- Qualcomm v. ParkerVision, 2017-2012, 2017-2013, 2017-2014, 2017-2074 (Fed. Cir.) – Successfully represented ParkerVision in defending appeal of highly favorable final written decisions enterd by the Patent Trial and Appeal Board in four inter partes reviews challenging ParkerVision’s 6,091,940 patent, titled "Method and system for frequency up-conversion." Federal Circuit affirmed PTAB decisions upholding patentability of ParkerVision claims.
- Straight Path IP Group, Inc. v. Sipnet EU S.R.O, 2015-1212 (Fed. Cir.) – Represented Straight Path IP in successfully appealing to the Court of Appeals of the Federal Circuit the adverse result of an inter partes review handled by another firm. The IPR decision canceled 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 and Straight Path. On remand, PTAB found all of the challenged claims patentable.
viewpoints
Patent Owner Tips for Avoiding IPR Institution
March 1, 2022 | Blog | By William Meunier, Michael Renaud, Brad M Scheller
Inter partes reviews have a very high institution rate. And worse, once instituted IPRs result in invalidated claims at an inordinately high rate. The best defense against an IPR petition is to convince the Patent Trial and Appeal Board to deny institution. In this post, the Mintz IPR team put together out top six tips for avoiding IPR institution.
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A Business Deal Could Kill Your Right to Challenge a Patent’s Validity
February 22, 2022 | Blog | By William Meunier, Peter Cuomo, Marguerite McConihe, Sean Casey
Last week, the Federal Circuit issued a decision holding that parties can contractually bargain away their rights to file petitions for Inter Partes Review (“IPR”) at the Patent Trial and Appeals Board (“the Board”). This precedential case is the first to hold that a forum selection clause can forfeit the right to challenge a patent’s validity by IPR. The takeaway from this case is that when entering into any type of patent related agreement, be careful to ensure that your right to file IPR petitions is not stripped away, particularly by way of a forum selection clause which is “prima facie valid and should be enforced” in the words of the Federal Circuit.
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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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Patent Owner Tips for Surviving an Instituted IPR: From Depositions to Sur-Replies
January 14, 2022 | Blog | By William Meunier, Michael Renaud, Brad M Scheller
As a Patent Owner in an instituted Inter Partes Review (IPR), there are dozens of considerations to bear in mind – from strategically approaching depositions and maximizing expert testimony, to drafting the final say in your sur-reply. We provide a summary of key takeaways from throughout the series and invite you to access all of our tips for more detail on Surviving an Instituted IPR.
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PTAB “Overlooks” Rehearing Consequences and Swings the Rehearing Door Wide Open
October 1, 2021 | Blog | By Daniel Weinger, William Meunier, Sean Casey
A recent decision by a Patent Trial and Appeal Board (PTAB) panel in Canadian Solar Inc., et al v. The Solaria Corporation may have opened the door for aggrieved parties to seek rehearing for any reason, rather than the prescribed situation where the panel “misapprehended or overlooked” some issue in an inter partes review (IPR).
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Patent Owner Tip #16 for Surviving an Instituted IPR: Improve Your Chances of Getting Amendments
August 26, 2021 | Blog | By William Meunier, Courtney Herndon
Here are four tips for improving your chances of convincing PTAB to grant a motion to amend your claims.
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Patent Owner Tip #11 for Surviving an Instituted IPR: Use It or Lose It (in the POR)
July 1, 2021 | Blog | By William Meunier
When faced with an instituted IPR, the Patent Owner should include all arguments it wishes to preserve for appeal in its Patent Owner Response (“POR”), including arguments that the Patent Owner believes are unlikely to succeed before the Board but may be attractive to the Federal Circuit. Otherwise, the argument will be deemed waived and unavailable in any subsequent appeal.
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Arthrex SCOTUS Ruling: The IPR Show Must Go On, Just with (a Bit) More Oversight
June 24, 2021 | Blog | By William Meunier, Brad M Scheller, Andrew DeVoogd
On Monday, in a highly-anticipated decision, a fractured Supreme Court issued its opinion in Arthrex v. Smith & Nephew, striking a portion of the America Invents Act (AIA) as unconstitutional—but providing an effectively toothless remedy.
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Patent Owner Tip #6 for Surviving an Instituted IPR: Using Objective Sources & Evidence to Support the Expert Declaration
May 13, 2021 | Blog | By William Meunier, Courtney Herndon
As we have previously discussed, expert testimony is a critical aspect of the Patent Owner’s case-in-chief of an inter partes review (“IPR”) proceeding. In addition to retaining the right expert witness and maximizing that expert’s testimony in the expert declaration, it is imperative that expert testimony is supported by objective, contemporaneous documentary evidence.
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Patent Owner Tip #1 For Surviving An Instituted IPR: Approach IPR Depositions Like A Cross-Examination
April 8, 2021 | Blog | By William Meunier, Sean Casey
As a Patent Owner in an instituted Inter Partes Reviews (“IPR”), one of the first and most critical tasks before you is deposing the Petitioner’s witnesses, including its experts. But approaching an IPR deposition like a typical litigation deposition could be a big mistake.
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News & Press
Patent Stakeholders Weigh in on High Court Decision to Hear Arthrex
October 15, 2020
In IP Watchdog, Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Member William Meunier weighed in on the U.S. Supreme Court’s decision to grant certiorari in three cases involving Arthrex, Inc. focusing on the question of whether the administrative patent judges of the Patent Trial and Appeal Board were constitutionally appointed.
Law360 featured a Mintz patent litigation team as “Legal Lions” in its weekly list of the top verdicts for its representation of Elm 3DS Innovations, a patent licensing entity.
In a precedential opinion, the Federal Circuit affirmed decisions upholding the validity of nearly a dozen Elm patents on semiconductor technologies that accused infringers challenged at the Patent Trial and Appeal Board.
The Mintz team representing Elm includes Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Members William Meunier, James Wodarski and Michael Newman, Special Counsel Sandra Badin, and Associates Kevin Amendt and Matthew Galica.
In a precedential opinion, the Federal Circuit affirmed decisions upholding the validity of nearly a dozen Elm patents on semiconductor technologies that accused infringers challenged at the Patent Trial and Appeal Board.
The Mintz team representing Elm includes Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Members William Meunier, James Wodarski and Michael Newman, Special Counsel Sandra Badin, and Associates Kevin Amendt and Matthew Galica.
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
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
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.
Recognition & Awards
- Best Lawyers in America: Patent Litigation (2021-2022)
- Recognized as a top IPR practitioner by Patexia in its annual survey of IPRs (2018 – 2022)
- Managing Intellectual Property: Patent Star - Patent Contentious and Patent Office Proceedings - Massachusetts (2019 – 2021)
