Intellectual Property

Patent Litigation

Patent litigation demands a significant investment of your time and capital. At Mintz Levin, we understand this — and fully appreciate your need for an efficient, cost-effective approach to defending against claims or enforcing your rights so you can continue to focus on the bottom line, providing the innovative products and services that put your company ahead of the rest. Each team assigned to a client’s litigation comprises the lawyers best suited to handle your work, based on technical background, experience in the specific jurisdiction, and years of service.

In patent cases you need lawyers who not only understand the science behind your patents, but who are also seasoned litigators with proven track records of winning time and time again. Our litigators are prepared, right from the start, to take your case to trial if a prompt settlement cannot be negotiated. We’re skilled in all phases of litigation, from a realistic assessment of damages and the impact of the case on your business through claim construction, summary judgment, and trial in key jurisdictions throughout the United States and before international tribunals. Our seasoned trial teams are staffed with attorneys who each have defined roles that will not change on the eve of trial. Our best and brightest attorneys will litigate your case from start to finish, using the latest litigation technologies to reduce costs, improve efficiency, and deliver the best possible results.

Quick Facts

  • Success in Inter Partes Reviews, on behalf of patent owners and accused infringers
  • Use Section 101 (Alice motions) to successfully challenge patents and achieve dismissal of litigation proceedings
  • Tried cases to verdict in federal district courts across the country, including through appeal to the US Court of Appeals for the Federal Circuit
  • Significant international experience including before European arbitration tribunals, the International Chamber of Commerce, and the US International Trade Commission
  • Experience defending against patent claims brought by patent holding companies against multiple defendants in well-known venues, including the Eastern District of Texas
  • Achieved success in patent litigation across the United States, in the Eastern District of Texas; US International Trade Commission; the Northern, Central and Southern Districts of California; and the District of Delaware
  • Led 20+ document reviews involving over 2 billion documents in the past five years
  • Sensitivity to regulations governing companies in health care–related industries, including HIPAA, privacy regulations, and international data transfer limitations
  • Coordination between litigation and transactional attorneys to assess your company’s portfolio for valuable intellectual property and to assist you in establishing and enforcing a licensing program
  • Deep technical experience in a broad range of areas, including the following:
    • Electronics
    • Computers
    • Software
    • Data communications
    • Life sciences
    • Medical devices

Areas of Focus

  • All phases of patent, trade secret, trademark, and copyright litigation
  • Inter Partes Reviews
  • Motion practice, including §101/Alice Motions
  • Patent and IPR appeals
  • E-discovery
  • International Trade Commission (ITC)
  • IP counseling and due diligence
  • Negotiated settlements
  • Patent reexamination
  • Trademark and false advertising
  • USPTO interference

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
Sort by: Name  Title  Office

Matthew C. Hurley

Matthew C. Hurley

Member / Chair, Intellectual Property Practice

Sharon M. O'Brien

Sharon M. O'Brien

Special Counsel, E-Discovery

Daniel T. Pascucci

Daniel T. Pascucci

Member / Managing Member, San Diego Office; Co-Chair, Class Action Practice

Michael T. Renaud

Michael T. Renaud

Member / Chair, Intellectual Property Division

Case Study: Mintz Levin Secures Full Victory for Innovators in Lengthy Hatch-Waxman Battle

On October 10, 2017, the Southern District of New York (SDNY) entered judgment on a decision that closed the door on contentious federal district court Hatch-Waxman litigation that Mintz Levin handled on behalf of innovator pharmaceutical clients Kowa Pharmaceuticals and Nissan Chemical, handing our clients a complete victory on all asserted claims, and protecting their unique cholesterol-lowering medication, Livalo®.

Eight generic drug manufacturers filed Abbreviated New Drug Applications (ANDAs) with the US Food & Drug Administration (FDA) in 2014 and 2015, claiming that certain of our clients’ patents are invalid and/or would not be infringed by the drugs they planned to manufacture. To protect our clients’ interests, Mintz Levin’s team sued each of the generic manufacturers in a series of cases filed in the SDNY beginning in late 2014.

As part of their attack, defendants Mylan and Sawai petitioned for inter partes review (IPR) of one of the two patents before the Patent Trial and Appeal Board (PTAB). The Mintz Levin team successfully defeated those IPRs, resulting in the PTAB denying institution of all three petitions.

Throughout the process, the individual defendants attacked each patent with multiple theories of invalidity and/or non-infringement. The various defendants retained 18 defense experts in an attempt to support their attacks. As a result of Mintz Levin’s efforts, several defendants settled the litigation before trial, and another settled after trial. Three defendants — Amneal, Apotex and Lupin — remained in the litigation for trial, necessitating a 10-day trial in January 2017. The court issued separate decisions on each patent, with our clients prevailing in both decisions.

The first decision, handed down on April 11, 2017, upheld the validity of US Patent No. 5,856,336, which expires on December 25, 2020, and covers the active pharmaceutical ingredient in Livalo®, pitavastatin calcium, and its use for treating elevated cholesterol. The second decision, handed down on September 19, 2017, found that the proposed generic products of one of the remaining defendants would infringe (the other defendant had abandoned its non-infringement position), and upheld the validity of all asserted claims of US Patent No. 8,557,993, which expires on February 2, 2024, and which covers the polymorph of pitavastatin calcium contained in Livalo®.

The Kowa Pharmaceuticals and Nissan Chemical legal team was led by David Conlin and Kathleen Carr, and included Intellectual Property Members Adam Samansky, Thomas Wintner, John Bauer, and Kevin Ainsworth, Counsel Peter Cuomo, Jennifer Dereka, and Sharon O'Brien, Associates Joseph Rutkowski, Richard Maidman, and Megan Yung, and paralegal Vicki Francis.

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.

International Trade Commission

  • Certain Memory Modules and Components Thereof, and Products Containing Same (337-TA-1089) Represent Complainant Netlist, Inc., a California memory module company, in the ITC asserting six patents against the Korean-based memory giant SK hynix. The technology claimed by the asserted patents is essential to the JEDEC DDR4 RDIMM and LRDIMM standards, which are implemented by the accused imported products. The respondents are asserting novel RAND defenses in the ITC, and in a co-pending case involving the same patents in the District Court for the Central District of California. The ITC evidentiary hearing is scheduled for November 2018.
  • Certain Graphics Systems, Components Thereof, and Consumer Products Containing the Same (337-TA-1044) Filed an ITC complaint on behalf of Advanced Micro Devices (AMD). The patented technology covers graphics processing technology employed by smart devices such as televisions and handsets. Respondents include LG, VIZIO, MediaTek, and Sigma Designs. The evidentiary hearing is scheduled for early December 2017. 
  • 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. 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.
  • 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.
  • Certain Consumer Electronics and Display Devices and Products Containing Same (337-TA-836) – Represented owners of the patent portfolio of the former Silicon Graphics as complainant in the ITC, and as plaintiff in multiple parallel District of Delaware cases. Cases were filed between late 2011 and early 2012, and all were resolved by the end of January 2013. The technology at issue relates to LCD panels, central processor units, graphics processing units, and other microprocessor technology. Successfully licensed all respondents, including some of the largest and most recognized names in the converged device space — Apple, LG, Research in Motion, Samsung, and Sony.
  • Certain Portable Communication Devices (337-TA-827) – Represented complainant in the ITC and as plaintiff in multiple parallel District of Delaware cases. Successfully licensed all respondents, including some of the largest and most recognized names in the converged device space — Amazon, LG, Motorola, Pantech Wireless, Research in Motion, Sony, and more. Cases were filed in December 2011 and settled in May 2012.
  • Certain Electronic Imaging Devices (337-TA-726) – Represented complainant in this three-patent ITC case. Filed in June 2010 against converged device manufacturers and focused on digital camera technology found in cell phones, laptop computers, and personal digital assistants, the matter was fully settled in April 2011. The result was successful licensing programs with three out of four respondents, among which are recognized leaders in the electronics device manufacturing space — HTC, LG, Research in Motion, and more.
  • 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.
  • Certain Electronic Devices, including Handheld, Wireless Communications Devices (337-TA-667) – Represented complainant in three-patent ITC case and in parallel Federal District Court cases. Filed in December 2008, the cases were settled as to all respondents by May 2010 and resulted in successful licensing agreements with each, including some of the largest and most recognized names in the converged device space — HTC, Panasonic, Research in Motion, and more.

Federal District Courts

  • Preservation Wellness Technologies, LLC v. NextGen Healthcare Information Systems, LLC (EDTX, 2:15-cv-015632) – Successfully represented defendant NextGen in a case claiming patent infringement by NextGen’s Patient Portal program, which offers patients convenient access to their medical records. Mintz Levin filed a motion to dismiss the complaint on the grounds that the patent claims at issue were directed to patent-ineligible subject matter. U.S. Federal Circuit Judge William Bryson, sitting by designation in the Eastern District of Texas, presided over the case and granted our client’s motion.
  • 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).
  • 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.
  • Message Notification Technologies LLC v. Unify Inc. F/K/A Siemens Enterprise Communications (DDE, 1:13cv1883) – Represented defendant in a single-patent case involving automated e-mail notification technology. The case settled on terms favorable to our client after nearly two years of litigation.
  • Clouding IP, LLC v. Unify Inc. F/K/A Siemens Enterprise Communications, et al. (DDE, 1:13cv1457) – Represented the defendant in a four-patent case involving remote data access. Successfully resolved the matter on terms favorable to our client early in the case.
  • 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.
  • 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. Then won summary judgment that the defendant’s septal occluder medical device infringed our client’s patent concerning the treatment of heart defects.
  • Enterasys Networks, Inc., v. Foundry Networks, LLC, et al. (D. Mass. - 1:05cv11298) – Represented plaintiff asserting four patents relating to networking technology (switches, LAN networking). Filed in 2005, action settled favorably in 2013 after Markman hearing and prior to trial.
  • Vtrax Technologies Licensing, Inc. v. Siemens Communications, Inc., et al. (S.D. Fl.- 9:10cv80369) – Successfully defended our client, the US division of a Germany-based global manufacturing concern, an insurance carrier, and a large national bank in a patent infringement action relating to unified communications and related technologies. Case filed in March 2010 against various enterprise systems; obtained dismissal of case for our clients in June 2011.
  • 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.
  • Ambato Media, LLC v. Clarion Co., Ltd, et al. (E.D. Tex. - 2:09cv242) – Represented Ambato asserting patents on methods of broadcasting location specific information for use in personal navigation and in dash navigation devices. Tried and won this case, which was settled after verdict and before appeal.
  • 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.

Clients We Serve

  • Biotechnology
  • Digital imaging and DSP
  • Medical devices
  • Microprocessors and electronics
  • Network hardware and SANs
  • Printing and imaging
  • Satellite and CATV systems
  • Semiconductor
  • Semiconductor manufacturing
  • Software
  • Telecommunications / wireless