Federal District Court Patent Litigation
Life Sciences
- Acera Surgical, Inc. et al v. Nanofiber Solutions, LLC, et al (D. Del -1-20-cv-00980) - Mintz represented multiple defendants, including Nanofiber Solutions LLC, Renovoderm LLC and Atreon Orthopedics, LLC, against allegations of infringement of five U.S. patents related to wound closure innovations using nanofiber technology filed by Acera Surgical, Inc. The parties amicably settled in September 2023.
- Horizon Medicines LLC v. Teva Pharmaceuticals USA, Inc., 2:20-cv-08188 (D. N.J.) – Lead Counsel to Teva Pharmaceuticals USA, Inc., in ANDA litigation involving fixed-dose oral combination product.
- Solta Medical, Inc. v. Lumenis Ltd. and Lumenis, Inc., 1:19-cv-11600-DJC (D. Mass) - Representing defendants in an infringement case involving U.S. Patent Nos. RE42,594 and RE43,881.
- Amgen Inc. and Amgen Manufacturing, Limited v. Tanvex BioPharma USA, Inc. and Tanvex Biologics Corp., 3:19-cv-01374 (S.D.Cal.) - Representing defendants in a patent infringement arising under the Biologics Price Competition and Innovation Act of 2009. Plaintiffs allege infringement of a patent involving methods of refolding recombinant proteins used in the manufacture of a biological product.
- Kowa Pharmaceuticals America et al v. Amneal Pharmaceuticals, LLC, and related cases - Represented plaintiffs Kowa Company, Ltd., Kowa Pharmaceuticals America, Inc. and Nissan Chemical Industries, Ltd. in litigation which involved compound, formulation, and polymorph patents directed toward quinoline-type mevalonolactones (or, pitavastatin calcium) relating to the drug product Livalo®. Several of the cases successfully resolved pre-trial, and after a 10-day trial plaintiffs prevailed on all issues in two court decisions against the remaining defendants, Amneal and Apotex. Mintz represents Kowa and Nissan in the appeal filed by Amneal and Apotex in the Federal Circuit. The team also defeated institution of three inter partes reviews filed by generic manufacturer defendants in these cases.
- SoClean, Inc. v. Sunset Healthcare Solutions, Inc., 1:21-cv-10131 and 1:20-cv-10351 (D.Mass) - Represent SoClean, Inc. in patent infringement cases filed against Sunset Healthcare Solutions, Inc. involving an automated continuous positive airway pressure (“CPAP”’) sanitizing device.
Technology
- Nanoco Technologies, Ltd. v. Samsung Electronics Co., Ltd., et al., 2:20-cv-00038, (E.D. Tex.) - Represented British nanotechnology company Nanoco Technologies, Ltd., a world leader in the development and manufacture of cadmium-free quantum dots and other nanomaterials, in a patent infringement case involving the synthesis of quantum dots, and use of quantum dot film resins in electronic display devices. The Mintz team also represented Nanoco in corresponding IPR proceedings before the United States Patent and Trademark Office. The firm secured a $150 million settlement for the client, which put an end to all global litigation between Nanoco and Samsung.
- Koninklijke Philips N.V. et al v. Realtek Semiconductor Corp., et al., 1:20-cv-01240, -01241, -01242, -01243, -01244, -01247 (D.Del) - Represent Philips in multiple district court actions and parallel cases filed before PTAB and the ITC involving digital video-capable integrated circuits and associated firmware.
- DivX, LLC v. LG Electronics Inc., et al., 1:20-cv-01202, -01203 (D.Del); DivX, LLC v. LG Electronics Inc., Samsung Electronics, et al., 2:20-cv-00301 (E.D. Tex.) - Represent DivX, LLC in patent infringement cases involving internet video and streaming media consumer electronics.
- Parus Holdings Inc. v. LG Electronics Inc. and LG Electronics U.S.A. Inc., 3:20-cv-05896 (N.D. Cal.); Parus Holdings Inc. v. LG Electronics 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.
- Netlist, Inc. v. SK hynix, Inc., et al. - 6:20-cv-00194, -00525 (W.D. Tex.) - Represent plaintiff Netlist, Inc. in asserting three patents essential to JEDEC DDR4 RDIMM and LRDIMM standards against the Korean-based memory company, SK hynix in the Western District of Texas. Trial is scheduled for October of 2021.
- SMIC Americas, et al. v. Innovative Foundry Technologies LLC, 4:20-cv-02256 (N.D. Cal.) - Representing Innovative Foundry Technologies LLC in a declaratory judgment action of non-infringement. The matter resolved favorably following our client's motion to dismiss.
- Innovative Foundry Technologies LLC v. Semiconductor Manufacturing International Corporation, et al., 6:19-cv-00719 (W.D. Tex) - Represented Plaintiff in enforcing 4 patents related to semiconductor manufacturing technology. The case proceeded through Markman hearing where claims were construed favorably in all four patents and a “not invalid” determination issue in response to an attempt to invalidate one patent entirely. All claims between IFT and SMIC have been confidentially settled.
- Lighthouse Consulting Group, LLC v. Citizens Financial Group, Inc., 2:19-cv-00338, -00340 (E.D. Tex.) - Represent defendant Citizens Financial Group, Inc. in patent infringement action cases involving ubiquitous imaging device based check image capture.
- Globalfoundries U.S., Inc. v. Taiwan Semiconductor Manufacturing Co., Ltd., et al., 6:19-cv-00489, 00491, -00492, -00494, -00496 (W.D. Tex) - Representing plaintiff in a patent infringement case against Taiwan Semiconductor Manufacturing Co., Ltd., TSMC North America, TSMC Technology, Inc. and Apple Inc. The case involves the direct and indirect infringement of four of its patents related to semiconductor devices, integrated circuits, and products containing the same.
- Express Mobile, Inc. v. Phase2 Technology LLC, 3:19-cv-03353 (N.D. Cal.) - Represent defendant in a patent infringement case involving a browser based web site generation tool and run time engine.
- Wildcat Licensing WI LLC v. General Motors et al., 1:19-cv-00833, -00834, -00839, -00840 ,-00842, -00843, -00844, -00845, -00846 (D. Del.) - Representing an owner of patents directed to assembly and fastening technologies against automotive manufacturers and suppliers in the District of Delaware. Also representing the patent owner in simultaneous IPR proceedings before the PTAB.
- Advanced Silicon Technologies, LLC v. Sigma Designs, Inc., 3:19-cv-01168 (N.D.Cal.) - Represent AST in a patent infringement action involving a Method and apparatus for compressed texture caching in a video graphics system, Method and system for improved data access, Geometric engine including a computational module for use in a video graphics controller, and Dividing work among multiple graphics pipelines using a super-tiling technique.
- Boom! Payments, Inc. v. Shopify and Stripe, 3:19-cv-00590 (N.D. Cal.) - Represent Shopify as defendant in an action filed by competitor, Boom! Payments, alleging patent infringement relating to U.S. Patent Nos. 8,429,084 and 9,235,854. The court granted defendants' motion to dismiss on the ground that the asserted claims of plaintiff's online transaction payment patent encompassed unpatentable subject matter and found that the claims lacked an inventive concept.
- ATI Technologies and Advanced Micro Devices v. MediaTek, 1:19-cv-00070 (D. Del.) - Represented plaintiffs in a patent infringement case filed against MediaTek Inc. and MediaTek USA Inc. alleging infringement of two patents which cover inventions relating to important aspects of AMD's GPUs and APUs. A parallel case was filed and argued before the ITC, which determined that the defendants violated Section 337 by infringing the '506 Patent, and issued a limited exclusion order against Defendants. This district court action settled following that determination.
- Scanning Technologies Innovations LLC v. Toast, Inc., 2:17-cv-00167 (E.D. Tex.) - Represented Toast, Inc. against non-practicing entity Scanning Technologies Innovations, defending claims of infringing a patent related to point of sale technologies. Settled the case quickly and favorably for the client.
- Advanced Micro Devices, Inc. and ATI Technologies ULC v. Vizio Inc., et al., 1:17-cv-00063, -00064, -00065 (D. Del) - Represented Advanced Micro Devices in multiple federal district cases running parallel with a complaint filed in the ITC. The patented technology covers graphics processing technology employed by smart devices such as televisions and handsets. Defendants included LG, VIZIO, MediaTek, and Sigma Designs. LG settled and the remaining defendants are subject to Limited Exclusion Orders and Cease & Desist letters issued by the ITC in August 2018.
Consumer Products
- SRAM, LLC v. Princeton Carbon Works Inc., 9:21-cv-80581 (S.D. Fla) - Obtained a significant and complete defense verdict for client Princeton CarbonWorks, Inc. in the U.S. District Court for the Southern District of Florida. Princeton CarbonWorks is a Connecticut-based bicycle wheel maker that was accused of infringing two patents by competitor and industry giant SRAM, LLC. This was a “bet-the-company” dispute for Princeton CarbonWorks that culminated in a two-week trial in Miami, Florida. At the conclusion of the trial, a nine-person jury reached a verdict of no infringement and no damages in favor of Princeton CarbonWorks.
- Copan Italia SpA et al v. Puritan Medical Products Company LLC et al, 1:18-cv-00218 (D. Me) - 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.
- Peter Thomas Roth Labs LLC at el. v. Miller et al., 19-698 (N.D. Cal.); Peter Thomas Roth Labs LLC et al. v. Clair, 20-1220 (S.D.N.Y.) - Serving as lead defense counsel in class action cases on behalf of Peter Thomas Roth Labs, LLC concerning false advertising allegations in the realm of cosmetics under various California, New York, Florida and Washington consumer laws
- Rehrig Pacific Co. v. Polymer Logistics (Israel), Ltd., et al., 2:19-cv-04952 (C.D. Cal.) – Lead counsel to Polymer Logistics (Israel) Ltd., defending claims of patent infringement brought by a competitor. Successfully brought a motion to transfer the action from the U.S. District Court for the Southern District of Georgia to the Central District of California, and also obtained dismissal of willful infringement claims through the strategic use of Rule 12(b)(2) and 12(b)(6) motion practice.
Case Study
Mintz achieved a global settlement of an electronic components company’s decade-long patent dispute with a competitor after winning a two-week jury trial in a New York federal court. Our client filed the winning case after the competitor sued it twice for infringement in California.
Case Study
Mintz helped a client that makes patient monitoring systems move a patent defense case to a favorable forum, challenge the plaintiff’s infringement allegations, and win a partial concession of non-infringement, prompting the plaintiff to accept our client's offer of judgment before the start of discovery.
Case Study
For Kowa Pharmaceuticals and Nissan Chemical, Mintz sued nine generic drug makers that had filed Abbreviated New Drug Applications (ANDA) with the FDA. The court upheld the validity and infringement of all asserted claims in two patents for the cholesterol drug Livalo®.
Case Study
Mintz secured dismissal of an EDTX patent infringement case against NextGen Healthcare Information Systems that targeted NextGen’s Patient Portal program. The appellate court affirmed that patents directed to longstanding methods of organizing human activity are patent-ineligible subject matter.