Sean focuses his intellectual property practice on patent litigation, strategic IP counseling, and patent valuation. He has experience representing clients before the International Trade Commission (ITC), Federal district courts, and the Patent Trial and Appeal Board. Sean draws on his background in computer science and software development to advise clients across the technology sector. His practice covers a range of technologies including microprocessors, graphics processors, RF circuitry, consumer telecommunication systems, semiconductors, parking meters, drones, software, and flocked swabs.
Sean has held multiple roles in ITC investigations and Federal district court cases where he is relied upon by trial team leaders for developing infringement, validity, and claim construction positions in cases involving global high tech companies. Additionally, he has served as counsel and liaison in multiple inter partes review and post-grant proceedings, where he developed and coordinated validity positions for patents being simultaneously asserted in multiple jurisdictions.
Sean’s practice is complemented by years of industry experience. Before joining Mintz, Sean was a software engineer for a defense contractor where he specialized in distributed systems designed to find radio-based targets with direction finding and geolocation techniques and with low-level hardware devices and wireless communication protocols. Before that, for his graduate work, Sean conducted research at the University of Massachusetts at Lowell focusing on wireless sensor networks.
Experience
International Trade Commission
- Certain Flocked Swabs, Products Containing Flocked Swabs, And Methods of Using Same (337-TA-1279) - Representing Copan Italia and Copan Industries as complainants in the International Trade Commission, asserting patent infringement claims against global competitors in a case involving the use of flocking technology (common in the textile industry) in the production of biological specimen collection swabs. Evidentiary hearing is scheduled for June 2022.
- Certain Semiconductor Devices, Products Containing the Same, and Components Thereof (II) (337-TA-1177) - Represented GlobalFoundries at the International Trade Commission and in multiple Western District of Texas actions, involving the direct and indirect infringement of four patents related to semiconductor devices, integrated circuits, and products containing the same. Additional defendants in these actions included Apple, Broadcom, Cisco, nVidia, Arista, Asus, and Lenovo. Within 2.5 months of filing at the ITC, the cases settled on favorable terms.
- Certain Semiconductor Devices, Integrated Circuits, and Consumer Products Containing the Same (337-TA-1149) – Mintz represented Innovative Foundry Technologies as part of a global enforcement strategy to protect 5 asserted patents relating to semiconductor fabrication and packaging. Respondents for the ITC matter included Taiwan Semiconductor Manufacturing Company, Qualcomm Incorporated, MediaTek, and Vizio. Cases were simultaneously filed in U.S. District Court and internationally in Germany and China. The investigation was instituted in March of 2019 and resolved favorably prior to the conclusion of discovery in August of 2019.
- Certain Graphics Systems, Components Thereof, and Consumer Products Containing the Same (337-TA-1044) – Represented Advanced Micro Devices (AMD) as complainant in the ITC asserting patents covering graphics processing technology employed by smart devices such as televisions and handsets. Respondents include LG Electronics, VIZIO, MediaTek, and Sigma Designs, Inc. (SDI). Achieved settlement with LG prior to the conclusion of expert discovery. Following the evidentiary hearing, the presiding ALJ issued an initial determination finding a violation of Section 337 and recommending the imposition of an exclusion order against the remaining Respondents’ accused products. The ITC affirmed the ALJ’s finding of a violation on August 22, 2018. As a result, the Commission issued orders banning the importation of products made by VIZIO, MediaTek, and SDI and cease and desist orders against VIZIO and SDI.
- 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, Enterprise System Technologies, S.A.R.L. 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 Point-to-Point Network Communication Devices and Products Containing Same (337-TA-892) - Representing complainant in 3-patent litigation involving streaming media technology at the International Trade Commission and in parallel case in the Eastern District of Texas. Respondents/defendants include some of the most recognized global electronics manufacturers, a number of which have settled resulting in the closing of the ITC case.
Federal District Court
- Parus Holdings Inc. v. Apple, Inc. et al, 6:19-cv-00432, -00433, -00438, -00437, -00454 (W.D.Tex.)- Represent plaintiff in a patent infringement case involving robust voice browser system and voice activated device controller.
- IPS Group, Inc. v. Civicsmart, Inc., et al (SDCA 3:17-cv-632) – Defended Civicsmart and Duncan Parking against allegations of infringement of multiple patents involving wireless parking meters. Case settled following a favorable Markman ruling from the court.
Inter Partes Reviews
- Represented Parus Holdings in defense of inter partes reviews filed by Apple Inc. as part of its response to enforcement litigation brought by Parus in the Western District of Texas. The two challenged patents relate to robust voice browser system and voice activated device controller. Following oral hearing, PTAB rejected Apple’s attempt to invalidate Parus’s patent claims. (IPR2020-00686, -00687)
- Successfully represented Shopify as petitioner to invalidate claims of three patents related to characteristics of e-commerce platforms asserted by DDR in the District of Delaware. Mintz then briefed and argued the issues before the Federal Circuit which affirmed the PTAB's invalidity findings. (IPR2018-01011, -01012, -01014)
viewpoints
A Business Deal Could Kill Your Right to Challenge a Patent’s Validity
February 22, 2022 | Blog | By William Meunier , Peter Cuomo, Marguerite McConihe, Sean Casey
Last week, the Federal Circuit issued a decision holding that parties can contractually bargain away their rights to file petitions for Inter Partes Review (“IPR”) at the Patent Trial and Appeals Board (“the Board”). This precedential case is the first to hold that a forum selection clause can forfeit the right to challenge a patent’s validity by IPR. The takeaway from this case is that when entering into any type of patent related agreement, be careful to ensure that your right to file IPR petitions is not stripped away, particularly by way of a forum selection clause which is “prima facie valid and should be enforced” in the words of the Federal Circuit.
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PTAB “Overlooks” Rehearing Consequences and Swings the Rehearing Door Wide Open
October 1, 2021 | Blog | By Daniel Weinger, William Meunier , Sean Casey
A recent decision by a Patent Trial and Appeal Board (PTAB) panel in Canadian Solar Inc., et al v. The Solaria Corporation may have opened the door for aggrieved parties to seek rehearing for any reason, rather than the prescribed situation where the panel “misapprehended or overlooked” some issue in an inter partes review (IPR).
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Patent Owner Tip #18 for Surviving an Instituted IPR: Defending Depositions
September 23, 2021 | Blog | By Michael Newman, Sean Casey
In our penultimate patent owner tip for surviving an instituted IPR, we turn our discussion to defending the deposition of your expert. At this stage of the proceeding, your Patent Owner Response has been filed, and all the facts and arguments you need have already been developed, including any necessary expert testimony.
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Patent Owner Tip #14 for Surviving an Instituted IPR: When Not to Amend Claims in an IPR
August 12, 2021 | Blog | By Brad M Scheller , Sean Casey
We look to those circumstances when a patent owner should think twice about amending, including when significant past damages exist, the current claims possess strong infringement reads and claim scope, petitioners are highly-motivated to fight and patent owner is cost sensitive.
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Patent Owner Tip #10 for Surviving an Instituted IPR: Address Claim Construction and Public Availability
June 24, 2021 | Blog | By Daniel Weinger, Sean Casey
When confronted with instituted IPRs, Patent Owners should identify and exploit issues that the Petition glossed over and bring those to the attention of the Board. This will highlight for the Board important issues that the Petition failed to sufficiently address and can lead to victory for the Patent Owner.
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Patent Owner Tip #1 For Surviving An Instituted IPR: Approach IPR Depositions Like A Cross-Examination
April 8, 2021 | Blog | By William Meunier , Sean Casey
As a Patent Owner in an instituted Inter Partes Reviews (“IPR”), one of the first and most critical tasks before you is deposing the Petitioner’s witnesses, including its experts. But approaching an IPR deposition like a typical litigation deposition could be a big mistake.
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Good News/Bad News: Patent Owners and Petitioners Both Make Gains in CAFC Uniloc Decision
March 31, 2021 | Blog | By William Meunier , Sean Casey
The Federal Circuit’s recent Uniloc 2017 v. Facebook Inc. decision is a mixed bag of good and bad news for both patent owners and inter partes review petitioners. On the plus side for patent owners (but not for petitioners), the Federal Circuit determined that the so-called “No Appeal” provision does not necessarily apply to 35 U.S.C. § 315(e)(1), and, therefore, a patent owner may still appeal a Patent Trial and Appeal Board determination that a petitioner is not estopped from maintaining an IPR under § 315(e)(1).
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Supreme Court Rejects USPTO Attorney Fee Policy
December 17, 2019 | Blog | By Michael McNamara, Sean Casey
On December 11, 2019, the U.S. Supreme Court struck down the U.S. Patent and Trademark Office’s (USPTO) controversial policy of shifting attorneys’ fees in Peter v. NantKwest, Case No. 18-801. The Court ruled that the USPTO policy ran counter to the long-accepted “American Rule,” which says “[e]ach litigant pays his own attorney’s fees, win or lose, unless a statute or contract provides otherwise.”
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Patentability of Software Post-Alice: How Do Courts Determine Whether an Idea is Abstract ?
January 12, 2015 | Advisory | By Michael Renaud, Courtney Quish, Sean Casey, Matthew Karambelas
Since the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l on patentable subject matter, courts have tried to follow the prescribed framework.
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CAFC Finds Patent Claiming Software-Related Invention is Patentable
December 10, 2014 | Blog | By Matthew Karambelas, Sean Casey
For the first time since the Supreme Court’s Alice Corp. v. CLS Bank Int'l decision this past summer, the United States Court of Appeals for the Federal Circuit has found that a patent claiming a software-related invention was patentable subject matter under 35 U.S.C. § 101 (with Judge Chen writing the majority opinion).
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Recent Insights
A Business Deal Could Kill Your Right to Challenge a Patent’s Validity
February 22, 2022| Blog|
PTAB “Overlooks” Rehearing Consequences and Swings the Rehearing Door Wide Open
October 1, 2021| Blog|
