Intellectual Property

Protecting and leveraging your intellectual assets is vital to staying competitive and investing confidently in developing new products and services. Mintz Levin’s full-service Intellectual Property Practice can help you optimize your IP resources, whether you are an established company seeking an array of patent and trademark protections, an emerging company seeking to secure strategic business rights, or the owner of a portfolio seeking to harvest the value of dormant patent assets.

We work with clients both domestically in the US and Europe, and internationally, to provide comprehensive, practical advice to a wide range of emerging and established technology-based businesses. Our Intellectual Property attorneys and Technology Specialists work closely with our business lawyers and are committed to providing clients with dedicated service and the best advice. We have bench strength across the country and in Europe in a very broad range of technologies and in all areas of IP representation — patent prosecution and litigation, trade secrets litigation, trademark registration and litigation, copyright issues, domain disputes, and more.

Quick Facts

  • Team comprises more than 110 attorneys and technology specialists, including:
    • 33 PhDs (23 in the life sciences and the remaining in fields including electrical engineering, computer science, and civil engineering)
    • 42 engineers (mechanical, electrical, materials, civil, computer science)
  • Fully integrated IP practice of attorneys, technology specialists, and professionals
  • Routinely represent clients before the following:
    • US Patent and Trademark Office
    • US Copyright Office
    • UK Intellectual Property Office
    • European Patent Office
    • Federal and state courts
    • International Trade Commission
    • Regulatory and administrative agencies

  • Reputation as the go-to firm for high-stakes IP litigation sealed by numerous significant litigation victories
  • Experienced in complex patent prosecution, including reissues, reexaminations, interferences, oppositions, protests, and patent appeals
  • Consistent international patent advisory methodology
  • Recognized for excellence by the American College of Trial Lawyers, and by Chambers USA, Benchmark Litigation, and Super Lawyers

Areas of Focus

  • Alternative dispute resolution
  • Due diligence for business transactions
  • Enterprise-wide IP programs
  • Guidance to avoid infringing on the IP rights of others
  • Inter Partes Reviews
  • IP assessment and valuation
  • IP audits
  • IP portfolio strategies
  • Licensing and technology transfer
  • Opinion – freedom-to-operate, non-infringement
  • Patent and trademark oppositions and appeals
  • Patent and trademark prosecution
  • Patent litigation and appeals
  • Trade Secrets Litigation
  • Trademark Litigation

Rankings & Recognitions

  • IAM Patent 1000 (2016)
    • Patent Practice and 7 attorneys recognized among the "World's Leading Patent Practitioners"
  • IAM Strategy 300 (2015/2016)
    • Division Head for IP identified among "The World's Leading IP Strategists"
  • Managing Intellectual Property (2016)
    • US Life Sciences Patent Practice on list of annual Top Patent Firms, 7 attorneys named "Patent Stars" and 2 attorneys named "Trademark Stars"
  • Chambers USA (2016)
    • 3 IP attorneys identified as leading practitioners in their fields
  • Ocean Tomo (2016)
    • Patent Prosecution practice identified as among the 20 US practices producing the highest quality patents
  • BTI Consulting Group's 2016 Litigation Outlook
    • IP Litigation ranked in top 5% of all law firms by corporate counsel
  • Best Lawyers in America (2015)
    • 5 IP attorneys listed in Boston and San Diego
  • Super Lawyers (2016)
    • 40 IP attorneys listed in California, Massachusetts, New York, and Washington, DC
  • LMG Life Sciences (2016)
    • 3 attorneys named "IP Stars"
    • Selected as a Finalist for the Patent Strategy and Management Firm of the Year (2016)
Sort by: Name  Title  Office

Matthew C. Hurley

Matthew C. Hurley

Member / Chair, Intellectual Property Practice

C. Anthony Mulrain

C. Anthony Mulrain

Member / Co-Chair, Sports Law Practice

Sharon M. O'Brien

Sharon M. O'Brien

Special Counsel, E-Discovery

Michael T. Renaud

Michael T. Renaud

Member / Chair, Intellectual Property Division

Lisa M. Snyder

Lisa M. Snyder

Intellectual Property Practice Manager

Case Study: Federal Circuit Affirms PTAB Win

On June 23, 2017, the US Court of Appeals for the Federal Circuit affirmed decisions by the Patent Trial and Appeal Board (PTAB) upholding the validity of Straight Path IP Group’s video teleconferencing patents.

In determining that the PTAB had not erred when it issued its decisions in inter partes review (IPR) proceedings pertaining to claims in three of Straight Path’s US patents, the court agreed with PTAB’s rejection of arguments by appellants, including Samsung Electronics America, Inc., Samsung Electronics Co., Ltd., Cisco Systems, Inc., Avaya, Inc., LG Electronics, Inc., Toshiba Corp., VIZIO, Inc., Hulu, LLC, Verizon Services Corp., and Verizon Business Network Services.

Mintz Levin attorneys James Wodarski, Mike Renaud, Mike Newman, and Bill Meunier, assisted by attorneys Sandra Badin and Nick Armington, collaborated to develop Straight Path’s patent litigation strategy, with Wodarski successfully arguing the case before the court. In the past few years, the client’s patents have been intensely scrutinized in several IPRs and other administrative proceedings at the patent office, and Mintz Levin has secured multiple IPR wins for Straight Path. With this victory, Straight Path will be free to continue to address the industry’s pervasive use of its innovative technology, which facilitates real-time communications between users on the Internet. The company has filed law suits against several of the appellants and other technology companies for patent infringement.

Case Study: Sweeping IPR Wins Raise Firm’s Patent Owner Success Rate to 92%

Between December 2015 and March 2016, Samsung Electronics, Micron Technology and SK Hynix filed 14 inter partes reviews against 12 patents owned by Elm 3DS Innovations. The IPRs were part of the technology behemoths’ defense against patent infringement claims brought by ELM 3DS in the District of Delaware (DDE).

The firm did not initially represent ELM, but after the petitions were instituted, Mintz Levin was hired as replacement counsel to develop and execute the defense. The firm had to quickly get up to speed on the technology, patents, and arguments against the 107 claims being challenged in the IPRs. Failure to succeed in the IPRs would badly have undermined the pending DDE litigations.

Oral arguments were held on April 6, 2017 in the consolidated cases. Attorney Bill Meunier handled the arguments and teamed with attorneys Michael Renaud and Michael Newman in developing the defense.

In three sets of opinions issued between June and August, the Patent Trial and Appeal Board handed ELM 3DS a resounding victory in proceedings most often dominated by Petitioners. On average, Respondents succeed in only 35% of IPRs that receive a Final Written Decision. This set of wins increases Mintz Levin’s win percentage representing Respondents in IPRs with Final Written Decisions to 89% (92% if denials of institution are included).

Case Study: ITC Probe Boosts Licensing Revenues for Advanced Silicon Technologies

Mintz Levin represented Advanced Silicon Technologies (AST) in asserting four patents against leading automobile and original equipment manufacturers in an investigation before the International Trade Commission. The patents generally relate to 3D video graphics processing and intelligent memory control, and are practiced by, for example, infotainment systems, head-end units, navigation systems, graphics processors, microprocessors, integrated circuits, and other computing and/or graphics-capable electronic devices. Working in concert with Advanced Silicon’s licensing experts, Mintz Levin’s litigation and strategy team was able to resolve the ITC investigation favorably prior to the close of expert discovery. In exchange for licenses to its portfolio, Advanced Silicon received significant licensing revenue valued in the high eight digits.  Mintz Levin achieved this result less than eight months after Advanced Silicon initiated the first phase of its licensing program.

Case Study: PTAB Upholds All FootBalance Patent Claims

Mintz Levin achieved a second significant victory on behalf of FootBalance when the Patent Trial and Appeal Board (PTAB), in an Inter Partes Review (IPR) proceeding, handed down a final decision upholding all of the patent claims challenged by Zero Gravity Inside, Inc. (ZGI). FootBalance, a small company based in Finland, creates custom insoles by heating and then molding materials directly to a person's foot − an 10-minute process that eliminates the need to make multiple trips to a medical center for measuring and fitting. In an earlier decision in FootBalance's favor, the PTAB declined to institute a proceeding − a move that proved to be a significant first step in FootBalance's defense of its patent rights against ZGI. The two IPR petitions filed by ZGI are part of that company’s defense strategy against FootBalance in a litigation pending in the Southern District of California. These PTAB victories, by upholding FootBalance's patent rights, will help to protect our client's position in the marketplace while strengthening its position in the pending litigation.

Case Study: Mintz Levin Prevails for NextGen at Federal Circuit

In the Court of Appeals for the Federal Circuit, Mintz Levin successfully defended our client NextGen in an appeal of a 2016 Eastern District of Texas ruling that a medical records patent asserted against NextGen and others is unpatentable under the US Supreme Court’s Alice decision, which bars patents on computer-implemented abstract ideas.

The suit claimed that NextGen’s Patient Portal program infringed on a record management systems patent held by Preservation Wellness. In its decision granting NextGen’s motion to dismiss, argued by Mintz Levin attorney Michael Newman, the Eastern District of Texas held that the Preservation Wellness patent covered only the basic concept of a medical records system, and was thus not patent-eligible under Alice.

Michael T. Renaud, Division Head for the firm’s Intellectual Property Practice, argued for NextGen and on behalf of other defendants at the Federal Circuit on April 7, 2017, and the Court handed down its ruling on April 12. The Court’s speedy ruling affirming the Eastern District of Texas decision vindicates NextGen’s position that patents directed to longstanding methods of organizing human activity are unpatentable. It also suggests that the Court has provided sufficient clarity on Section 101 jurisprudence in the wake of Alice. Intellectual property attorneys Newman, James Wodarski and Sandra Badin worked with Renaud to secure the CAFC ruling in NextGen’s favor. The firm’s Intellectual Property Practice has achieved a number of victories for clients in patent cases before the Federal Circuit.

Case Study: Victory at CAFC — PTAB Decision Reversed and Remanded

Straight Path IP Group came to us after another firm handled an inter partes review before the Patent Trial and Appeal Board in which the Board cancelled each of the challenged claims of Straight Path’s US Patent No. 6,108,704. Our team developed the appellate strategy, drafted the briefs, and argued the appeal before the Federal Circuit. The argument focused on the construction of two claim terms.  In an opinion issued on November 25, 2015, the Federal Circuit reversed and remanded the Board’s decision cancelling our client’s claims. See Straight Path IP Group, Inc. v. Sipnet EU S.R.O, No. 15-1212, (Fed. Cir. Nov. 25, 2015). It was the first time the Federal Circuit reversed a Board decision in its entirety, and only the second time it held that the Board erred in construing the claims of a patent.

Case Study: Firm Expedites Due Diligence in Johnson & Johnson Acquisition

Mintz Levin handled the IP due diligence on behalf of Johnson & Johnson in its $4.325 Billion acquisition of Abbott Medical Optics. Our work was handled in a compressed timeframe; from mid-August when we were brought into the transaction to the deal announcement date on September 11. Along with two in-house J&J attorneys, we had to assess the full scope, geographic extent, and relative value of the 2000+ item patent portfolio of AMO; understand the numerous license and settlement agreements involving AMO; evaluate and monitor AMO’s pending patent litigations; and make preliminary Freedom-to-Operate assessments to the deal team.

Case Study: Mintz Levin Secures Multiple IPR Wins at PTAB

On behalf of telecom, automotive, and software innovators, Mintz Levin achieved victories in nine recent inter partes review proceedings, both knocking out asserted patents and saving others. 

In March 2017 alone, Mintz Levin has achieved significant Inter Partes Review (IPR) victories at the Patent Trial and Appeal Board (PTAB) on behalf of four different clients. 

On March 7, the PTAB handed down positive decisions in four IPRs the firm handled for ParkerVision Inc., which designs, develops, and markets proprietary radio frequency (RF) technologies. The PTAB upheld significant claims in one of the many important patents this innovative company holds in the RF space.

The very next day, the PTAB denied a petition to institute an IPR against our client RAD Data Communications, which is a global telecom solutions and products vendor. That victory, which Mintz Levin achieved in collaboration with the Israel-based Intellectual Property firm A.C. Entis IP, was particularly significant because petitions to initiate IPRs are granted in the vast majority of cases.

The Ides of March brought with it another clear-cut victory for Mintz Levin–represented companies SL Corporation and Hyundai. On March 15, the PTAB decided in favor of our clients in two IPR proceedings in which the petitioners had challenged the validity of our clients’ patent directed to an automatic control system to adjust automotive headlights. The patent had been asserted against Hyundai in the US District Court for the District of Delaware, in a case that was stayed pending the outcome of the IPRs and which is now positioned to be a win for Hyundai as well.

Finally, on March 21 and 22 — fresh on the heels of the solstice — two IPR victories for SimpliVity Corporation put a new spring in that pioneering software provider’s step. PTAB denied institution of two petitions for review by Springpath, Inc., SimpliVity’s direct competitor in the hyperconvergence software market. By upholding the validity of SimpliVity’s ‘799 patent, these PTAB victories increase the likelihood that SimpliVity will prevail in a patent infringement action currently pending against Springpath.

These victories continue Mintz Levin’s track record of success in IPR proceedings, in which we have defended the validity of patents our clients seek to assert and invalidated patents asserted against our clients. 

Life Sciences

  • Serve as lead outside patent counsel to a biotech company that is focused on discovery and development of small molecule histone methyltransferase (HMT) inhibitors, a new class of targeted therapeutics based on breakthroughs in the field of epigenetics. Assisted collaboration with another company to discover, develop, and commercialize therapeutics for the treatment of lymphoma and other cancers in genetically defined patients. The work involved extensive patent due diligence on intellectual property and involved working with inside and outside patent and corporate counsel to finalize the transaction.
  • Serve as lead patent counsel handling the patent prosecution, patent advisory, and IP due diligence for a biotech company for the treatment of infectious and other serious diseases.
  • Serve as lead patent counsel for a biotech company in managing in-licensed patent applications and preparing and prosecuting numerous patent applications that cover Toll-like receptor agonists, which are currently undergoing clinical trials for treatment of various disorders including cancer, respiratory and autoimmune diseases, and inflammatory disorders.
  • Assumed responsibility as lead patent counsel handling the patent prosecution, patent advisory, and IP due diligence for a biotech company to prosecute numerous patent applications claiming anti-infectives. Manage in-licensed portfolio relating to clinical stage antiviral therapeutics. Provided strategic review of patent portfolio in connection with a $45 million round of financing and partnering activities.
  • Served as lead patent counsel for a biotech company in drafting and prosecuting patent applications that cover antibody drug conjugates with a Fleximer scaffold.
  • Served as lead patent counsel for a global pharmaceutical company in prosecuting to issuance numerous patents that cover emulsion PCR. Lead counsel in opposition proceedings in the EPO and in re-examination proceedings in the USPTO as well as counsel in interference proceedings in the USPTO.
  • Served as lead patent counsel for a pharmaceutical company in prosecuting to issuance numerous patents that cover uroguanylin-derived peptide therapeutics useful for the treatment of gastrointestinal disorders. Lead counsel in opposition proceedings in the EPO and in re-examination proceedings in the USPTO.
  • Serve as lead patent counsel for company that specializes in the development of anti-infective drugs.
  • Working with a client to develop a strong patent portfolio for cutting-edge wireless life science technologies focused on injectable medications.
  • Represent a Germany-based global manufacturing company with its IP portfolio development across multiple units in technologies varying from medical devices, such as patient monitors and physiological sensors, to mine and firefighting safety and training technologies.


  • Served as lead patent counsel and built a significant portfolio in relation to advanced laser-based gas sensing technologies in the petrochemical industries, including a pioneering patent for the detection of moisture in natural gas pipelines (which covers the company’s biggest selling product). It was largely based on the strength of the portfolio that the company was acquired by a large German / Swiss conglomerate. We represented the company with regard to the entire transaction with a significant IP diligence component.
  • Assist a global technology company with the development of a significant portion of its IP portfolio (approaching 1,000 patent families) working with in-house counsel and innovators across the globe. We are the go-to team when it is launching new platforms.
  • Sole outside patent counsel to a leading company in credit scores, credit card fraud detection, and various technologies relating to Big Data. We have obtained some fundamental scoring patents in various financial and insurance industries.
  • Patent, litigation, and licensing counsel to a pioneer in the field of international medical travel, assisting it with a patented system and algorithms.
  • Serve as primary outside counsel handling the patent prosecution, infringement assessment, and trademark proprietary technology for a high-technology printing press manufacturer, based in Israel, which enables Variable Data Enhancing (VDE) with an embossing effect that gives dimensionality and texture to images and words.
  • Serve as primary outside counsel handling the patent prosecution needs of a provider of cost-effective and scalable disk backup solutions.

Action Sports

  • We serve as intellectual property counsel protection for a company on its novel wave generation technology and unique wave pools, which will make perfect, continuous barrelling surfing waves. We also manage trademark registration for the brand.
  • Prepared and filed patent application on a new skateboard truck that includes vibration-dampening elements integrated within the hangar and axel of the truck.

IP Litigation

  • Certain Consumer Electronics with Display and Processing Capabilities(337-TA-884) Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC. Investigation was instituted in June 2013 and among the respondent entities were Panasonic, Toshiba, Vizio, and ZTE. Most respondents settled. After an evidentiary hearing held over several days in May 2014, on August 29, 2014 Mintz Levin successfully obtained a recommendation for a Limited Exclusion Order against the remaining respondent, which chose to settle while Commission review of the Administrative Law Judge’s Initial Determination was pending.
  • Virnetx v. Mitel Networks Corp., et al. (E.D. Tex. - 6:11cv18) – Defended our client, the US division of a Germany-based global manufacturing concern, in a patent infringement action relating to secure network communications. Filed in January 2011, favorable settlement was achieved for our client in February 2013. Virnetx had previously scored a $368 million verdict against Apple and a $105 million verdict against Microsoft (Microsoft later settled with Virnetx for $200 million).
  • Certain LED Photographic Lighting Devices and Components Thereof (337-TA-804) — Represented a California-based complainant (plaintiff) and its UK parent, companies that make LED lighting systems for use in film and TV production, at the International Trade Commission. The ITC handed down its Final Initial Determination of infringement on September 7, 2012. On January 17, 2013, the ITC issued a General Exclusion Order (GEO) against respondents (defendants) based in both China and the United States. The result in this case is particularly notable because it is rare for the ITC to issue a GEO. It is much more common for complainants to seek and receive a Limited Exclusion Order from the court due to the rigorous criteria and careful balancing of interests that apply to requests for GEOs.
  • EON Corp. IP Holdings LLC v Skyguard LLC, et al. (E.D. Tex. - 6:11cv15) – Represented a defendant in this multi-patent infringement case relating to vending management communication modules. Filed in June 2011, case was settled very favorably after 18 months of litigation. EON, formerly known as TV Answers, Inc., holds more than three-dozen patents and has been fairly aggressive in its enforcement of a number of them. Among its targets have been some of the largest and most successful technology companies, including Apple, LG, Pantech, Honeywell, RIM, T-Mobile, and more. In some instances, EON has extracted high settlements from these organizations.
  • Alexander Orensthteyn 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.

Clients We Serve

  • Biotechnology companies
  • Early-stage companies
  • Energy and clean tech companies
  • Engineering design
  • High technology companies
  • Hospitals
  • Life sciences companies
  • Manufacturers
  • Medical device companies
  • Microfluidics companies
  • Nanotechnology companies
  • Pharmaceuticals companies
  • Research centers
  • Software companies
  • Telecommunications companies
  • Universities