Intellectual Property

District Court Litigation

There are 94 Federal District Courts in the United States, but the majority of patent litigation is handled in only a few of them, and Mintz Levin has experience in them all. We are not only experienced, successful patent litigators, we are also technically trained professionals who understand the latest technologies in the market, whether smart (4G/LTE) or connected devices (IoT), pharmaceuticals, medical devices, or biosimilars. We work with clients first to understand their business needs and expectations, then to develop approaches to litigation that reflect that understanding. In some instances, this means a quick exit as a defendant; at other times it means fighting through trial and appeals. For our plaintiff clients, it may mean actively keeping a competitor out of the marketplace or using litigation to achieve a business result. Whatever our clients’ needs, we will help develop and execute a strategy to achieve them.

In case after case, we have demonstrated our ability to win at trial and to use that reputation for successfully bringing matters to conclusion through negotiation. Litigation strategy is never one-size-fits-all, but with Mintz Levin’s longstanding reputation for winning in District Court, we put our clients in the best position to achieve their business goals.

Quick Facts


  • Achieved success in patent litigation in key Federal District Courts across the United States:
    • Eastern District of Texas
    • Northern, Central, and Southern Districts of California
    • District of Massachusetts
    • District of Delaware
    • District of New Jersey
    • Southern District of New York
    • Eastern District of Virginia
  • Successfully represent defendants against non-practicing entities in single and multi-defendant cases, including leveraging §101/Alice motions to get cases dismissed.
  • Utilize Inter Partes Reviews to successfully stay District Court litigation and ultimately help clients achieve their strategic goals
  • Design strategies to mitigate risk posed to clients from non-meritorious infringement allegations.
  • Leverage District Court litigation to achieve negotiated settlement on behalf of patent owners whose exclusive rights have been infringed.
  • Coordinate between litigation and transactional attorneys to assess the value of clients’ intellectual property portfolios and to assist them in establishing and enforcing successful licensing programs.

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
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Sharon M. O'Brien

Sharon M. O'Brien

Special Counsel, E-Discovery

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.

EXPERIENCE

  • 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.
  • Presqriber , LLC v. Partners Healthcare System, Inc. (EDTX, 6:14cv00873) – Represented the defendant in a patent infringement lawsuit relating to interactive medications ordering software. Resulted in a favorable settlement for the client.
  • Presqriber, LLC v. NextGen Healthcare Information Systems, LLC (EDTX, 6:14cv458) – Represented defendant in a patent infringement action related to electronic health systems, products central to the NextGen business. The allegations targeted a core activity of NextGen's business and resulted in a favorable settlement for our client.
  • TLIF, LLC v. Alphatec Holdings, Inc. (EDTX, 2:14cv00882) – Represented the defendant in a patent infringement lawsuit relating to intervertebral implants. Resulted in a favorable settlement for the client.
  • 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.
  • Securenet Solutions Group, LLC v. Agent Video Intelligence, Inc. (EDTX, 2:15cv1857) – Represented defendant Avigilon Inc. in a consolidated case against SecureNet Solutions Group, LLC (“SNSG”), a non-practicing entity that asserted several patents in the security camera space. Mintz Levin settled the case on terms favorable to Avigilon and the case continues to pend against other defendants.
  • Scanning Technologies Innovations, LLC v. Shopify et al (EDTX, 2:16cv501) – After filing a challenge to the asserted patent’s subject matter eligibility, and threatening to challenge jurisdiction, Scanning Technologies Innovations, LLC, agreed to dismiss the case against our client Shopify without prejudice, and received no payment in return.