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. & 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 PTAB 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. The 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 13 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 six IPRs filed by Qualcomm against ParkerVision’s US 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 four of the six 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 US 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. The PTAB denied two of the petitions and then terminated the other two petitions in light of subsequent settlement.
Federal District Court
- Truveris, Inc. v. SkySail Concepts, LLC, NDOH-1-21-cv-01262 — Defended SkySail against allegations of patent infringement of a computer system that manages the selection of prescription drug plans. The district court granted SkySail’s motion to dismiss for lack of patentable subject matter under 35 U.S.C. § 101. The district court granted the motion because the asserted claims of plaintiff’s prescription drug plan selection management patent encompassed unpatentable subject matter and found that that the claims were directed toward an abstract idea.
- Alexander Orenshteyn v. Citrix (S.D. 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. (N.D. 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. (E.D. 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., & Duncan Parking Technologies, Inc., 17-cv-00632 (S.D. CA) — 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. (E.D. Tex. – 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, & 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, & 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.
- Certain Semiconductor Devices, Integrated Circuits, & Consumer Products Containing the Same (337-TA-1149) — Mintz represented Innovative Foundry Technologies as part of a global enforcement strategy to protect five 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 US District Court and internationally in Germany and China. The investigation was instituted in March 2019 and resolved prior to the conclusion of discovery in August 2019.
- Certain Graphics Systems, Components Thereof, & 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, & 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 2016 and resolved favorably prior to the conclusion of expert discovery in August 2016.
- Certain Communications or Computing Devices & 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 2015.
Federal Circuit Appeals
- Truveris, Inc. v. SkySail Concepts, LLC (Fed. Cir. 23-1024) — Represented SkySail Rx as Defendant-Appellee in an appellate case adverse to Truveris related to a patent for a computer system that manages the selection of prescription drug plans. The Federal Circuit issued a per curiam summary affirmance of the district court’s order granting SkySail’s motion to dismiss the case.
- 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 13 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
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.
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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
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.
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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
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.
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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.
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“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.
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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.
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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.
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Federal Circuit Clarifies Scope of Covered Business Method Review
February 27, 2017 | Blog | By William Meunier
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.
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PTAB Provides A Possible Roadmap For Patent Owners To Successfully Argue Secondary Considerations Of Nonobvious
February 1, 2017 | Blog | By William Meunier
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.
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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.”
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News & Press
Mintz Attorneys Recognized in Managing IP’s 2025 IP Stars
June 13, 2025|
Mintz IP Practice Recognized in 2025 IAM Patent 1000
June 2, 2025|
Litigator of the Week Runners-Up and Shout-Outs
March 7, 2025|
Mintz Ranked among Most Active, High Performing Patent Law Firms by Patexia
September 20, 2024|
Mintz Ranked As Most Active, High Performing Patent Law Firms By Patexia
September 30, 2023|
Mintz Ranked Among Most Active and Best Performing IPR Firms by Patexia
September 23, 2022|
Patent Stakeholders Weigh in on High Court Decision to Hear Arthrex
October 15, 2020|
PTAB Uses Recent Precedent In Backing Elm Over Samsung
October 19, 2017|
3 Tips For Managing Your Cases At The PTAB
August 17, 2017|
PTAB Reverses Course, Upholds Teleconferencing Patent
May 25, 2016|
Straight Path Patents Mostly Survive Samsung-Led AIA Review
March 8, 2016|
LG, Hulu Tell PTAB Fed Circ. Erred in Reviving Network IP
February 9, 2016|
Recognition & Awards
Best Lawyers in America: Patent Litigation (2021 – 2027); Intellectual Property Litigation (2023 – 2027)
Managing Intellectual Property: Patent Star – Patent Contentious and Patent Office Proceedings – Massachusetts (2019 – 2026)
IAM Patent 1000: World's Leading Patent Practitioners (2025 – 2026)
Patexia: Ranked among the Most Active and Best Performing ITC Attorneys (2021 – 2026)
IAM Strategy 300: Global Leaders (2025 – 2026)
IAM Strategy 300: The World's Leading IP Strategists (2025 - 2026)
Recognized as a top PTAB practitioner by Patexia in its annual survey of IPRs (2018 – 2025)
Patexia: Ranked among the Most Active and Best Performing CAFC Attorneys Representing Appellees (2022)
Involvement
- Member, Federal Circuit Bar Association
Recent Insights
