Recognized as one of the “Best Lawyers In America” for patent litigation, Bill has mastered the complexities of high-stakes patent litigation and inter partes review (IPR) proceedings.
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 24 years’ experience litigating patent cases, both in district courts throughout the United States and before 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 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.
Education
- The John Marshall Law School (JD, summa cum laude, Order of the Coif)
- Tufts University (BS, Mechanical Engineering)
Experience
- Represented GE Video Compression in defense of the ‘710 patent which claims improved techniques for using “binary arithmetic coding” to compress data and has been incorporated into leading video compression standards. (HEVC standard essential patent). PTAB denied institution of the petition in August 2019 which was filed in June by Unified Patents. IPR2019-00726
- Successful Defense of 12 IPRs – Three dimensional structure memory - Mintz 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. PTAB's determination was upheld on appeal to the Federal Circuit.
- Represented ParkerVision in defense of 6 IPR petitions filed against the company's 6,091,940 patent, titled "Method and system for frequency up-conversion". Saved a significant percentage of claims, winning 4 out of 6 IPRs, and the wins were affirmed at the Federal Circuit. (IPR2015-01828, 01829, 01831, 01832, 01833, 01834)
- 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 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.
- Lead attorney for Straight Path 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.
- 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.
Recognition & Awards
- Best Lawyers in America: Patent Litigation (2021)
- Recognized as a top IPR practitioner by Patexia in its annual survey of IPRs (2018-2020)
- Managing Intellectual Property: Patent Star - Patent Contentious and Patent Office Proceedings - Massachusetts (2019)
Recent Insights
Viewpoints
News & Press
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.
Viewpoints
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.
Read more
Good News/Bad News: Patent Owners and Petitioners Both Make Gains in CAFC Uniloc Decision
March 31, 2021 | Blog | By William Meunier, Sean Casey
The Federal Circuit’s recent Uniloc 2017 v. Facebook Inc. decision is a mixed bag of good and bad news for both patent owners and inter partes review petitioners. On the plus side for patent owners (but not for petitioners), the Federal Circuit determined that the so-called “No Appeal” provision does not necessarily apply to 35 U.S.C. § 315(e)(1), and, therefore, a patent owner may still appeal a Patent Trial and Appeal Board determination that a petitioner is not estopped from maintaining an IPR under § 315(e)(1).
Read more
Tip #3 for Avoiding IPR Institution: Use Disclaimers Strategically
November 5, 2020 | Blog | By William Meunier, Peter Cuomo
Under U.S. patent law, “No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). And petitioners only need to demonstrate a reasonable likelihood of prevailing with respect to one challenged claim in order to secure a favorable institution from the PTAB. 35 U.S.C. § 314.
Read more
Avoiding IPR Institution: Your Best Defense to an IPR Challenge
October 27, 2020 | Blog | By Peter Cuomo, William Meunier, Brad M Scheller
The United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) was once famously referred to by the former chief judge of the Federal Circuit, the honorable Randall Rader, as a patent death squad.
Read more
Fate of PTAB Judges and Decisions Now in Hands of Supreme Court
October 15, 2020 | Blog | By Michael Renaud, William Meunier, Monique Winters Macek
On October 13, 2020, the U.S. Supreme Court granted three petitions for writ of certiorari related to Arthrex v. Smith & Nephew addressing two issues that will determine the fate of PTAB judges and decisions.
Read more
PTAB Presses Pause On All Arthrex Remands
May 12, 2020 | Blog | By William Meunier, Daniel Weinger, Matthew Galica
On Friday, May 1, 2020, Chief Administrative Patent Judge Scott R. Boalick of the Patent Trial and Appeal Board (“PTAB”) paused all activity in the significant number of PTAB cases remanded to it from the Federal Circuit under Arthrex (discussed here).
Read more
Mintz Rings in 2020 with Top 10 Recognition for ITC Practice
January 6, 2020 | Blog
Mintz is recognized as among the top ten firms in ITC Section 337 litigation by Patexia in its inaugural "ITC Intelligence Report". We are pleased to be among the firms included in this publication and thrilled that it has come on the heels of a great year at the ITC for the Mintz team.
Read more
PTAB allows Amending Claims on Grounds not raised by Petitioner, but were Addressed by the District Court in its Finding of Indefiniteness
December 10, 2019 | Blog | By William Meunier, Rithika Kulathila
To amend challenged claims during an Inter Partes Review (IPR), the patent owner must show that the proposed amendment responds to a ground of unpatentability at issue in the IPR trial.
Read more
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, 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.
Read more
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.
Read more
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.