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: 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: 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.