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Michael T. Renaud

Member / Chair, Intellectual Property Division

MTRenaud@mintz.com

+1.617.348.1870

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Michael is recognized as one of the World’s Leading IP Strategists by Intellectual Asset Magazine, repeatedly appearing in its annual IAM 300 publication. He is an experienced litigator and the central tactician in developing and implementing multinational enforcement, licensing, and litigation strategies for global corporations. Michael and his teams help clients realize significant value by identifying patent assets which can be enforced to protect clients’ competitive positions and generate licensing revenue. He also represents clients accused of infringement, and his success in these matters is informed by his full understanding of how plaintiff cases are developed and, in turn, how to strategically attack them.

As firmwide Chair of the Intellectual Property Division, Michael leads an international team of IP prosecutors, litigators, and transaction specialists. As an engineer with 20 years’ experience in intellectual property, Michael achieves success both in and out of the courtroom stemming from his uncommon combination of sound legal judgment, strong business acumen, and experience with and sensitivity to changing market conditions. Michael is driven to help his clients attain their business objectives and has years of experience evaluating and valuing diverse patent portfolios. His cutting edge work on SEP valuation and enforcement is supported by his unmatched ability to identify untapped assets and value drivers.

Clients rely on Michael to develop multinational strategies tailored to their specific needs. He is known for his experience with developing comprehensive monetization strategies; conducting IP due diligence; counseling investment firms on implementing strategies for leveraging patent value; negotiating deals and generating revenue through strategic partnerships; and prosecuting coordinated international enforcement actions.

Most successful enforcement and licensing efforts today require an attorney like Michael who can manage parallel litigations in U.S. Federal District Courts, in front of the U.S. International Trade Commission, and in global jurisdictions including China, Europe, and the UK. Recent successful Mintz-coordinated global efforts have involved regional IP courts in Shanghai, China, and in Dusseldorf and Mannheim, Germany, in addition to multiple U.S. venues.

Michael also advises clients on patent portfolio assessment and conducts IP due diligence in connection with transactions. He counsels private equity firms and venture capital funds on IP assets and patent value. He also helps patent owners develop and implement strategies for identifying and leveraging untapped assets in their patent portfolios.

Education

  • University of Connecticut (JD)
  • Duke University (BS, Mechanical Engineering)

Experience

International Trade Commission

  • Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (DN 3489) – Representing DivX, a video codec company headquartered in San Diego, as Complainant before the ITC and in District of Delaware and Eastern District of Texas actions. The asserted patents involve innovations relating to internet video and streaming media.
  • Certain Digital Video-Capable Devices and Components Thereof (337-TA-3492) – Representing Koninklijke Philips N.V. and Philips North America LLC as Complainants before the ITC, and in District of Delaware and Central District of California actions. The asserted patents claim foundational content-protection technology widely implemented in, for example, ultra-high definition digital video-capable devices using the HDCP 2.2. standard, such as computers, displays, and televisions.
  • Certain Semiconductor Devices, Products Containing the Same, and Components Thereof (II) (337-TA-1177) - Represented GlobalFoundries as lead counsel 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 Human Milk Oligosaccharides and Methods of Producing the Same (337-TA-1120) – Represented Glycosyn LLC as complainant before the ITC against respondent Jennewein Biotechnologies GmbH, a large global competitor. The complaint alleged unlawful and unauthorized importation and production and/or manufacture of 2'-fucosyllactose oligosaccharides that directly infringe one or more claims of Glycosyn's U.S. Patent No. 9,453,230. Following oral hearing in May 2019, the Administrative Law Judge issued an Initial Determination finding that Jennewein had infringed claims of Glycosyn’s patent and recommended that a limited exclusion order issue, including a certification provision with heightened requirement.
  • 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 Computing or Graphics Systems, Components Thereof, and Vehicles Containing Same (337-TA-984) - Represented owner of portfolio of graphics processing and microprocessor patents, Advanced Silicon Technologies, LLC, as Complainant in an ITC investigation adverse to a number of automotive manufacturers, and infotainment system and chip suppliers. Respondents include Honda, Toyota, BMW, Audi, Volkswagen, NVIDIA, Texas Instruments, Renesas, Harman International, and Fujitsu-Ten. The investigation instituted in January of 2016 and resolved favorably prior to the conclusion of expert discovery in August of 2016.
  • 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 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 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 original Silicon Graphics, now known as Graphics Properties Holdings, 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 LED Photographic Lighting Devices and Components Thereof (337-TA-804) – Represented the complainant (plaintiff) that makes 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 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 due to the rigorous criteria and careful balancing of interests that apply to requests for GEOs.
  • 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.

Federal Circuit Appeals

  • Samsung Electronics Co., Ltd., Micron Technology, Inc., SK Hynix Inc. v. Elm 3DS Innovations, LLC, 2017-2474, 2017-2475, 2017-2476, 2017-2478, 2017-2479, 2017-2480, 2017-2482, 2017-2483, 2018-1050, 2018-1079, 2018-1080, 2018-1081, 2018-1082 (Fed. Cir.) – Successfully represented Elm 3DS Innovations in defending the appeal of highly favorable final written decisions entered by the Patent Trial and Appeal Board (PTAB) in thirteen inter partes reviews. PTAB held that petitioners did not establish the unpatentability of 105 claims across eleven patents, and the Federal Circuit affirmed the PTAB’s decisions.
  • Preservation Wellness Technologies LLC v. NextGen Healthcare Information Systems LLC, et al, 2016-2193, 2016-2194, 2016-2195 (Fed. Cir.) - Successfully argued at the Court of Appeals for the Federal Circuit to affirm an Eastern District of Texas ruling from May 2016 that held unpatentable a medical records patent asserted by Preservation Wellness against long-time client NextGen Healthcare. Mintz also argued on behalf of co-appellees Allscripts Healthcare Solutions Inc. and Epic Systems Corp. NextGen Healthcare provides electronic health record, financial, and health information exchange solutions for myriad healthcare organizations and the infringement allegations threatened “Patient Portal,” a key component of the company’s service.
  • Straight Path IP Group, Inc. v. Sipnet EU S.R.O, 2015-1212, (Fed. Cir.) - Represented Straight Path IP in successfully appealing to the Court of Appeals of the Federal Circuit (CAFC) the adverse result of an inter partes review handled by another firm. The IPR decision canceled all challenged claims of Straight Path’s US Patent No. 6,108,704. In the Straight Path IP Group, Inc. v. Sipnet EU SRO appeal, the CAFC for the first time completely reversed an adverse IPR decision, remanding the matter for further proceedings under the correct construction advocated by Mintz and Straight Path.

Federal District Court

  • Copan Italia SpA, et al. v. Puritan Medical Products Company LLC, et al. (DME, 1:18-cv-00218) - Representing Copan Italia in asserting patent infringement and unfair competition claims against our client’s largest competitor in a case involving the use of flocking technology (common in the textile industry) in the production of swabs to be used for the collection of biological specimen.
  • Preservation Wellness Technologies, LLC v. NextGen Healthcare Information Systems, LLC, 2:15-cv-01562 (EDTX) – U.S. Federal Circuit Judge William Bryson presided over the case, granting Mintz client NextGen’s motion to dismiss after oral argument in April 2017. Judge Bryson held that Preservation Wellness’ patent at issue covers nothing more than the basic concept of a medical records system, which he said is not patent-eligible under the U.S. Supreme Court’s Alice decision. Mintz represented NextGen on the appeal at the CAFC and the decision was upheld.

Inter Partes Reviews

  • Represented GE Video Compression in defense of the ‘710 patent which claims improved techniques for using “binary arithmetic coding” to compress data and has been incorporated into leading video compression standards. (HVEC standard essential patent). PTAB denied institution of the petition in August 2019 which was filed in June by Unified Patents. IPR2019-00726
  • Successful Defense of 12 IPRs – Three dimensional structure memory - Mintz represented Elm 3DS Innovations in a series of 14 IPRs filed by leading technology companies, including SK Hynix, Micron, and Samsung. We were hired as replacement counsel following institution of the IPRs which had been filed in late 2015 and early 2016. Final Written decisions in 13 of the proceedings were received in June and August 2017 and confirmed validity of all but two challenged claims. PTAB's determination was upheld on appeal to the Federal Circuit.
  • Defense of Multiple IPRs – Point-to-Point Communication Over Computer Networks – Currently representing Straight Path IP Group in the defense of seventeen inter partes reviews filed against three U.S. patents concerning technology for facilitating point-to-point communications over computer networks. Petitioners include Samsung Electronics Co., Ltd.; Cisco Systems, Inc.; Avaya Inc.; LG Electronics, Inc.; Toshiba Corp.; VIZIO, Inc.; Verizon Communications, Inc.; and Hulu, LLC.

Trade Secrets Litigation

  • New England Biolabs, et al. v. Enzymatics, Inc. (D. Mass, 1:12-cv-12125) – Defended Enzymatics against claims of trade secrets theft and patent infringement brought by three plaintiffs in a case involving nucleic acid ligands. Resulted in favorable settlement for our client.
  • L3 Communications Security and Detection Systems, Inc. v. Reveal Imaging Technologies, Inc., 1:04-cv-11884 (D. Mass) – Represented Reveal, a start- up technology company in parallel trade secret and patent infringement cases concerning methods and apparatus for scanning explosives in baggage. Following extensive discovery and summary judgment hearings in the proceedings, the cases settled favorably to Reveal.

Recognition & Awards

  • Included on the Massachusetts Super Lawyers – Intellectual Property Litigation list (2007, 2011 – 2020)
  • Selected for the 2015 – 2020 editions of IAM Strategy 300 – The World's Leading IP Strategists
  • Identified in the IAM Patent 1000, a listing of the “World’s Leading Patent Practitioners,” as a “go-to attorney for technology patent litigation" (2015 - 2020)
  • Included on the Managing Intellectual Property: Patent Star - Patent Contentious - Massachusetts (2018 - 2020)
  • Chambers USA: Massachusetts – Intellectual Property (2015 – 2017)
  • Recognized by The Legal 500 United States for Intellectual Property: Patent Litigation - International Trade Commission (2017-2018)
  • Included on the Super Lawyers Top 100 Attorneys in Massachusetts list (2016)
  • Recognized among the 50 most active IPR practitioners by Patexia in its annual survey of IPRs (2018-2020)

Involvement

  • International Trade Commission Trial Lawyers Association
  • Member, Intellectual Property Owners Association, Standards Setting Committee

Recent Insights

News & Press

Events

Viewpoints

Patent Litigation Viewpoint Thumbnail
The recent anti-suit injunction issued against InterDigital in its SEP litigation with Xiaomi is a somewhat predictable reaction to the recent UK Supreme Court decision against Huawei and ZTE.  One of the central arguments there was that the UK courts were trying to set themselves up as the international arbiter of FRAND disputes. 
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

Fate of PTAB Judges and Decisions Now in Hands of Supreme Court

October 15, 2020 | Blog | By Michael Renaud, William Meunier, Monique Winters Macek

On October 13, 2020, the U.S. Supreme Court granted three petitions for writ of certiorari related to Arthrex v. Smith & Nephew addressing two issues that will determine the fate of PTAB judges and decisions.
Read more
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Another One Bites the Dust – N.D. Tex. Dismisses Antitrust Claims re FRAND Commitments with Prejudice

September 17, 2020 | Blog | By Michael Renaud, Joseph Miller, Adrian Kwan

In the latest decision addressing antitrust liability for FRAND commitments, Judge Barbara M. G. Lynn of the Northern District of Texas dismissed a complaint from Continental Automotive Systems, Inc. (“Continental”) alleging, inter alia, violations of §§ 1 and 2 of the Sherman Act, and declaratory judgment as to FRAND obligations against Avanci, LLC (“Avanci”) and various members of its patent pool (collectively, “Defendants”).
Read more
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DOJ to IEEE: Yes, Injunctive Relief Should Be Available for SEPs, and Stop Saying Otherwise

September 14, 2020 | Blog | By Michael Renaud, James Wodarski, Joseph Miller, Daniel Weinger, Kara E. Grogan

Last Thursday, September 10, 2020, the U.S. Department of Justice’s Antitrust Division (“DOJ”) issued an updated Business Review Letter (“2020 Letter”) to the Institute of Electrical Electronics Engineers, Incorporated (“IEEE”) clarifying the DOJ’s views on licensing and enforcement practices related to standard essential patents (“SEPs”).
Read more
Patent Litigation Viewpoint Thumbnail

THE SEP WORLD IN BALANCE: UK Harmonizes with Germany’s Rejection of Implementer Hold Out

August 26, 2020 | Blog | By Michael Renaud, James Wodarski, Daniel Weinger, Matthew Galica

Another major development in global standard essential patent litigation was handed down today, as the UK Supreme Court upheld lower court rulings that forced an efficient infringer of essential patents to accept a global license or face an injunction.
Read more
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In a reversal that came as no surprise to many observers, on Tuesday, August 11, 2020, a unanimous panel of the U.S. Court of Appeals for the Ninth Circuit reversed the decision by the U.S. District Court for the Northern District of California in FTC v. Qualcomm and vacated the district court’s worldwide, permanent injunction prohibiting several of Qualcomm Incorporated’s (“Qualcomm”) licensing practices with respect to standard-essential patents (“SEPs”) covering cellular technology.
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Federal Circuit Appeals Viewpoint Thumbnail

The Standard Does Rule Them All: Federal Circuit Panel Finds Standard Sufficient to Prove Infringement for SEP Compliant Products

August 5, 2020 | Blog | By Michael Renaud, James Wodarski, Daniel Weinger, Kara E. Grogan

The Federal Circuit yesterday, in a decision likely to be celebrated by holders of standard essential patents (“SEPs”), found that it is appropriate for the jury to decide essentiality of a patent, rather than the judge during claim construction.  This decision in Godo Kaisha IP Bridge I v. TCL Commc’n Tech. Holdings Ltd. also approved of the use of the standard as evidence of infringement where it was established that the accused products are standard compliant. 
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

IPR and Fast-Moving District Court Litigation: PTAB Formalizes the Analysis for Balancing Efficiency and Fairness

July 17, 2020 | Blog | By Michael Renaud, Daniel Weinger, Adam Rizk, Serge Subach

The Patent Trial and Appeal Board (“PTAB”) has designated two key institution decisions as “Informative.”  With these informative decisions, the PTAB has provided guidance on how the PTAB will apply efficiency and fairness factors that guide decisions to institute an inter partes review (“IPR”) when there is a fast-moving parallel district court litigation that may reach trial before the PTAB’s final written decision would be due.
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Patent Litigation Viewpoint Thumbnail

IT TAKES TWO TO TANGO: The German Federal Supreme Court Acknowledges That Infringer Hold-Out is a Real Problem

July 16, 2020 | Blog | By Michael Renaud, James Wodarski, Matthew Galica

Germany’s highest court has clearly and emphatically placed SEP implementers on notice that hold-out will not be tolerated, and that implementers must proactively share the burden and obligation to timely achieve a FRAND license.  An infringer’s conduct during FRAND negotiations is decisively important, and an infringer’s failure to undertake its burden and satisfy its obligations will preclude it from claiming that the patentee acted anti-competitively, or abused a dominant market position. 
Read more
Intellectual Property Viewpoints Thumbnail
Recent oral arguments at the Fed Circuit suggest that the U.S. may be taking steps which would enhance its attractiveness for SEP patent holders looking to resolve licensing disputes.  The Federal Circuit heard oral argument on Monday, July 6th, in Godo Kaisha IP Bridge I v. TCL Commc’n Tech. Holdings Ltd., No. 19-2215, that may pave an easier path for owners of standard essential patents (“SEPs”) to prove literal infringement of products that comply with that standard. 
Read more

News & Press

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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Members James Wodarski and Daniel Weinger, and Associate Kara Grogan co-authored an article published by IPWatchdog that critiques an article recently published in the University of San Diego Law titled “Glory Days: Do the Anticompetitive Risks of Standards-Essential Patent Pools Outweigh Their Procompetitive Benefits?,” which criticized patent pools, alleging inefficiencies and anticompetitive risks of pools for standard essential patents.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Members James Wodarski and Daniel Weinger, and Associate Kara Grogan co-authored an article published by IPWatchdog examining patent pools, an elective market mechanism designed to provide benefits to both innovators and implementers.
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In IP Watchdog, Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Member William Meunier weighed in on the U.S. Supreme Court’s decision to grant certiorari in three cases involving Arthrex, Inc. focusing on the question of whether the administrative patent judges of the Patent Trial and Appeal Board were constitutionally appointed.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Member and Co-chair of the firm’s Antitrust Practice Joseph Miller, and Member Daniel Weinger co-authored a Law360 expert analysis article that examined an updated business review letter issued by the U.S. Department of Justice (DOJ)'s Antitrust Division to the Institute of Electrical and Electronics Engineers Inc., which clarified the DOJ's views on licensing and enforcement practices related to standard essential patent (SEP)s.
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Michael Renaud, James Wodarski, and Mark Pino have been recognized in the 2020 edition of IAM Strategy 300: The World’s Leading IP Strategists.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Bloomberg Law on the Federal Circuit’s recent decision in Godo Kaisha IP Bridge I v. TCL Commc’n Tech. Holdings Ltd. and its potential impact on owners of standard essential patents
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In an article published by Law360, Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted extensively on a long-awaited decision from the German Federal Court of Justice in Sisvel v. Haier, which provided guidance on how companies are expected to act when negotiating fair, reasonable and nondiscriminatory (FRAND) licenses for standard essential patents (SEP)s.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Law360 on patent cases to watch in the second half of 2020, including global disputes over licensing standard essential patents. 
Press Release Thumbnail
Firm Awarded 10-Year Contracts for Biotechnology and Mechanical Engineering Innovations
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members James Wodarski and Andrew DeVoogd co-authored an article published in the February 2020 issue of The Licensing Journal that examined opportunities for remedies including injunctive relief as redress against infringement for standard essential patent (SEP) owners at the U.S. International Trade Commission.
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Mintz Member and Chair of the firm's Intellectual Property Division Michael Renaud, Member James Wodarski, and Associate Matthew Galica co-authored an article published by IAM on how policy and case law might affect standard-essential patent (SEP) rights and enforcement in the 2020s. 
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael T. Renaud was quoted in a recent Law360 article that examined a December 2019 joint policy statement from the U.S. Patent and Trademark Office and U.S. Department of Justice’s antitrust division stating that standard-essential patents should be treated no differently than other patents, and that companies that own them should be able to obtain injunctions.
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The October 29 edition of the Skilled in the Art newsletter published by Law.com reported that Mintz achieved a favorable Notice of Initial Determination at the U.S. International Trade Commission on behalf of the firm’s client Netlist, Inc., a California-based technology company focused on developing innovative server memory module products, including technology that is essential to certain JEDEC memory standards. Significantly, this is the first time since 2013 that a Section 337 violation has been found based on a standard-essential patent.
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Law360 reported that a U.S. International Trade Commission judge ruled that Korean manufacturer SK Hynix infringed on California-based technology company, and Mintz client, Netlist, Inc.’s standard essential patent related to server memory modules.

The article noted that the Mintz team representing Netlist includes Member and Chair of the Intellectual Property Division Michael Renaud, along with Members James Wodarski, Drew DeVoogd, Steve Akerley, Aarti Shah, and Associates Kristina Cary, Matthew Galica, and Tiffany Knapp.
Mintz Member and Chair of the firm’s Intellectual Property Division Michael T. Renaud was quoted in an article published by the Boston Business Journal featuring advice from top patent attorneys for innovators.
An article published by Law360 reported that following the U.S. International Trade Commission’s initial decision that Jennewein Biotechnologie GmbH’s imports infringe a Glycosyn LLC patent on human milk oligosaccharides, the Patent Trial and Appeal Board denied Jennewein’s petition for post-grant review of a related patent.

The Mintz team representing Glycosyn at the ITC includes Michael Newman, Thomas Wintner, Michael Renaud and James Wodarski; and the Mintz team representing Glycosyn at the PTAB includes Michael Newman, Thomas Wintner, Peter Cuomo and Daniel Weinger.
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Law360 featured a Mintz patent litigation team as “Legal Lions” in its weekly list of the top verdicts for its representation of Elm 3DS Innovations, a patent licensing entity.

In a precedential opinion, the Federal Circuit affirmed decisions upholding the validity of nearly a dozen Elm patents on semiconductor technologies that accused infringers challenged at the Patent Trial and Appeal Board.

The Mintz team representing Elm includes Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Members William Meunier, James Wodarski and Michael Newman, Special Counsel Sandra Badin, and Associates Kevin Amendt and Matthew Galica.
A team of Mintz attorneys - Mike Renaud, Rob Kidwell and Rob Moore - authored this issues response op-ed discussing the Department of Justice's (DOJ) statements on intellectual property rights, "the New Madison Approach." This approach marks a return to the core principles on which the patent laws are predicated.
This column notes that with the legal landscape surrounding SEPs shifting in many countries, it has never been more important to take a global view of patent assertion – but any cross-border litigation strategy needs careful consideration. A team of Mintz intellectual property attorneys including Members Mike Renaud and Jim Wodarski and Associate Rob Moore authored this column.
Member and Chair of the Intellectual Property Division Mike Renaud provides commentary in this feature article. The piece is part of Law360’s ongoing series highlighting important patent venues. Mike and other IP leaders discuss Germany as an area of focus for IP litigation in Europe.
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This feature article includes commentary from leading intellectual property industry sources to discuss how the standard-essential patents (SEPs) landscape has changed throughout recent years. Members Mike Renaud and Jim Wodarski are quoted among the IP insiders providing insight.
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This article notes that the Patent Trial and Appeal Board (PTAB) has denied Samsung’s request to challenge a patent it has been accused of infringing – resulting in a final win in a series of victories for Mintz client, Elm 3DS Innovations.
Mintz Members and intellectual property attorneys Mike Renaud, Aarti Shah and Jim Wodarski collaborated on an article published by Financier Worldwide Magazine discussing standard-essential patents.
A team of Mintz attorneys has successfully defended 105 of 107 patent claims across 14 instituted Inter Partes Reviews in a series of decisive wins for client Elm 3DS Innovations, LLC.
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The U.S. Court of Appeals for the Federal Circuit found decisively in favor of Mint and client Straight Path IP Group, Inc. in a long-fought battle over three of the licensing firm’s patents. The court upheld a prior 2016 decision by the Patent Trial and Appeal Board.
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Mintz attorneys have saved sixty-three of sixty-five challenged patent claims across eight patents in a series of sweeping Inter Partes Review victories for their client, Elm 3DS Innovations, LLC, victories that may pave the way to Elm prevailing in other pending invalidity challenges. 
The U.S. International Trade Commission (ITC) has announced it's launching an investigation into whether thermoplastic parts used in certain BMW, Honda, and Toyota vehicle models have infringed five patents owned by Intellectual Ventures LLC.
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Mintz IP attorneys Michael Renaud, Michael Newman, James Wodarski, and Sandra Badin are among industry sources in this article assessing a Texas ruling that "asserted claims of patent covering medical technology are invalid as abstract and not inventive" under Alice Corp v. CLS Bank International. 
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This Boston Business Journal feature article highlights Mintz’s intellectual property team in Boston. The piece notes that while other law firms move away from patent prosecution work, Mintz has continued to excel in that area and expand the team as well.
Mintz announced a victory before the U.S. Court of Appeals for the Federal Circuit. The court affirmed an Eastern District of Texas ruling from May 2016 that held unpatentable a medical records patent asserted by Preservation Wellness against NextGen Healthcare.
This piece, co-authored by Mike Renaud and Sandra Badin, discusses two notable decisions by the Federal Circuit and the ITC that impact standard essential patents and shape the incentives of technology innovators.
Mintz attorneys Michael Renaud, Robert Kidwell, and Robert Moore discuss the FTC’s suit against Qualcomm in the U. S. District Court for the Northern District of California as well as the timing of the lawsuit and specifics of the FTC’s complaints against said company. 
A team of Mintz attorneys author this column discussing the Korean Fair Trade Commission’s steep fine against Qualcomm for antitrust violations and the continued antitrust concerns raised by Qualcomm’s licensing practices.
Mintz has bolstered its nationally recognized, bicoastal Intellectual Property Practice with the addition of veteran Silicon Valley attorney Stephen J. Akerley, who will serve as a Member in the San Francisco office.
Division Head of the firm’s IP Section Michael Renaud and Special Counsel Sandra Badin authored this Massachusetts Lawyers Journal column on the recent decisions to opt out of standards-setting patent policy introduced by the Institute of Electrical and Electronics Engineers’ (IEEE).
Michael T. Renaud, Division Head for Mintz's Intellectual Property Section, is speaking on a panel at the 2016 IP Dealmakers Forum. The event is taking place November 17 at the Apella Event Space at Alexandria Center in New York City.
IP Division Head Michael Renaud, Member Aarti Shah, and Associate Adam Rizk authored this Financier Worldwide article discussing the ITC's statement that it will treat standard-essential patents the same way it treats all other patents asserted in a Section 337 investigation.
IP Division Head Michael Renaud and Associate Nick Armington authored this Bloomberg BNA Daily Labor Report column examining the protections and provisions brought about by the DTSA and how employers can fully leverage it to combat trade secret theft.
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IP Division Head Michael Renaud and Associate Nick Armington authored this Bloomberg BNA Daily Labor Report column that examines the DTSA and how employers can fully leverage it to combat trade secret theft.
Fifty-three Mintz attorneys have been named Massachusetts Super Lawyers for 2016 and thirty-one have been named Massachusetts Rising Stars. The findings will be published in the November 2016 issue of Boston Magazine and in a stand-alone magazine, New England Super Lawyers. 
Mintz Boston Members Michael Renaud and James Wodarski, Washington, D.C. Member Aarti Shah, and Boston Associate Adam Rizk authored this Law360 article on the newly-issued ITC statement discounting the idea that an SEP patent owner cannot bring infringement cases before the commission.
Mintz Members Michael Renaud and James Wodarski and Sandra Badin, Special Counsel and Appellate attorney, authored an Intellectual Asset Magazine column on how U.S. owners of standard-essential patents must be creative in their strategizing to protect the value of their rights.
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This Law360 feature article notes Honda’s removal from the U.S. International Trade Commission’s investigation into several foreign automakers’ “importation of vehicles with infotainment systems that allegedly infringed several patents.”
Firm’s National Healthcare Practice, NY Corporate/M&A and Litigation: General Commercial Among Newest Rankings
This article notes that the Patent Trial and Appeal Board (PTAB) upheld claims in a Straight Path IP Group patent matter. The coverage notes that the decision follows a rare reversal by the Federal Circuit that found the PTAB used an incorrect claim construction previously.
This article notes that the Patent Trial and Appeal Board has upheld the validity of two Straight Path patents in Samsung Electronics Co. Ltd.’s review.
The 2015 Chambers USA: America's Leading Lawyers for Business guide names 52 Mintz, Cohn, Ferris, Glovsky and Popeo, P.C.  attorneys as “Leaders in Their Fields.”

Events

Moderator
Speaker
Speaker
Sep
24
2020
Conference Reference Image
Speaker
Sep
14
2020
Conference Reference Image
Speaker
Moderator
Nov
13
2019
Panelist
Sep
10
2019

Patent Masters Symposium

IPWatchdog Institute

Renaissance Arlington Capitol View, 2800 S Potomac Ave, Arlington, VA

Moderator
Nov
7
2018

5th Annual IP Dealmakers Forum

The IP Investment Institute, LLC

New York, NY

Moderator
Sep
18
2018

Patent Licensing 2018

IAM

Golden Gate Club - The Presidio 135 Fisher Loop San Francisco, CA

Moderator
Nov
16
2017

IP Dealmakers Forum

The IP Investment Institute, LLC

New York, NY

Moderator
Sep
20
2017

Patent Licensing 2017

Intellectual Asset Management (IAM)

San Francisco, CA

Panelist
Nov
17
2016

2016 IP Dealmakers Forum

IP Dealmakers

Apella Event Space New York, NY

Speaker
Mar
22
2016

NPE 2016: The Business of Responsible Licensing

Intellectual Asset Management (IAM)

New York City

Moderator
Dec
7
2015

2015 IP Dealmakers Forum

The Apella, New York City