Intellectual Property

Patent Appeals

Mintz Levin attorneys regularly argue patent appeals at the Court of Appeals for the Federal Circuit (CAFC), and related matters in other federal and state appeals venues. We have handled appeals of cases litigated by our firm, and appeals of cases litigated at the District Court and USPTO by other firms. We are adept practitioners who have a strong record of success in appeals of complex IP and technology disputes. Our attorneys have successfully upheld or overturned adverse decisions on behalf of clients operating in the life sciences and in high technology.  

An increasing number of cases are being heard by the Federal Circuit, including those triggered by Inter Partes Review decisions from the Patent Trial and Appeal Board (PTAB). Our team has been successful at the court where others have not, and we intend to continue to prevail. The firm's most recent CAFC case resulted in the court's first full reversal of an adverse PTAB decision against a patent owner (our client, Straight Path). 

Quick Facts

  • Appeals team backed by approximately 50 patent litigators and nearly 100 commercial litigators
  • Experienced in appeals before the US Court of Appeals for the Federal Circuit, other US Circuit Courts of Appeal, and state appellate courts
  • Achieved first Reverse and Remand at CAFC of an adverse PTAB decision against a patent owner
  • Have successfully represented multiple innovator pharmaceutical companies at the CAFC in affirming District Court decisions of non-obviousness and exceptional case
  • Patent team experienced in authoring amicus briefs on behalf of industry groups

Areas of Focus

  • Inter Partes Review appeals
  • District Court litigation appeals
  • Represent appellant and appellee
  • Represent owners and accused infringers
  • Appeals at CAFC and state appellate courts
  • Licensing and technology transfer
  • Exceptional brief quality
  • Streamlined oral presentation

Rankings & Recognitions

  • IAM Patent 1000 (2016)
    • Patent Litigation 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"
  • Chambers USA (2016)
    • 3 IP attorneys identified as leaders in their respective patent fields, including the Division Head
  • BTI Consulting Group's 2016 Litigation Outlook
    • IP Litigation ranked in top 5% of all law firms by corporate counsel
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.

Court of Appeals for the Federal Circuit

  • Presidio Components Inc. v. American Technical Ceramics, No. 16-2607 (Fed. Circ. 2017)
  • Preservation Wellness v. NextGen Healthcare Information, No. 16-2195 (Fed. Circ. 2016)
  • Straight Path IP Group, Inc. v. Sipnet EU S.R.O, No. 15-1212, (Fed. Cir. 2015)
  • Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364 (Fed. Cir. 2015)
  • Ubicomm, LLC v. Ace Hardware Corp., 574 Fed. Appx. 929 (Fed. Cir. 2014)
  • MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc., 731 F.3d 1258 (Fed. Cir. 2013)
  • Flashpoint Tech. v. ITC, 496 Fed. Appx. 997 (Fed. Cir. 2013)
  • Wellman, Inc. v. Eastman Chem. Co., 2011 U.S. App. LEXIS 17780 (Fed. Cir. 2011)
  • Mitsubishi Chem. Corp. v. Barr Labs., Inc., 435 Fed. Appx. 927 (Fed. Cir. 2011)
  • Mars Inc. v. JCM Am. Corp., 374 Fed. Appx. 956 (Fed. Cir. 2010)
  • Japan Cash Mach. Co. v. MEI, Inc., 400 Fed. Appx. 563 (Fed. Cir. 2010)
  • Lincoln Nat'l Life Ins. Co. v. Transamerica Life Ins. Co., 609 F.3d 1364 (Fed. Cir. 2010)
  • Ariba, Inc. v. Emptoris, Inc., 2010 U.S. App. LEXIS 380 (Fed. Cir. 2010)
  • GE Homeland Prot., Inc. v. DSA Detection, LLC, 263 Fed. Appx. 42 (Fed. Cir. 2008)
  • Sanitec Industries v. Micro-Waste Corp., No. 07-1282 (Fed. Cir. 2008)
  • Takeda Chem. Indus. v. Alphapharm Pty., Ltd., 492 F.3d 1350 (Fed. Cir. 2007)
  • Brooktrout, Inc. v. Eicon Networks Corp., 253 Fed. Appx. 25 (Fed. Cir. 2007)
  • Takeda Chemical Industries Ltd., V. Mylan Labs, (Fed. Cir. 2007-1269)
  • PSN Illinois, Inc. v. Ivoclar Vivadent, Inc. (Fed. Cir. 2007-1512)
  • Novo Nordisk Pharm., et al v. Bio-Technology Gen., et al, No. 04-1581 (Fed. Cir. 2005)
  • NMT Medical, Inc. et al v. Cardia, Inc. (Fed. Cir. 2004)
  • Akeva LLC v. Adidas-Salomon AG, et al (Fed. Cir. 2003)
  • Alexander Orensthteyn v. Citrix (Fed. Cir. 2002)
  • Madey v. Duke University 307 F. 3d 1351 (Fed. Cir. 2002)
  • Cooper Cameron Corp v. Kvaerner Oilfield Products, No. 01-1383 (Fed. Cir. 2002)
  • Berry Sterling v. Pescor Plastics, Inc., No. 96-1380 (Fed. Cir. 1997)

Patent Appeals in Other Courts

  • Nat'l Tax Inst., Inc. v. Topnotch at Stowe Resort & Spa, 388 F.3d 15 (1st Cir. Mass. 2004)
  • IBM v. Liberty Mut. Fire Ins. Co., 303 F.3d 419 (2d Cir. N.Y. 2002)