IPRs & Other Post-Grant Proceedings
- Successfully Challenged Validity — Prepared and filed a petition for inter partes review on behalf of Eyenovia over a patent covering low-concentration atropine or atropine sulfate compositions. Mintz contended that all challenged claims are obvious in view of multiple prior art references teaching the use of low-concentration atropine formulations as well as related “kits” to treat or reduce the progression of myopia. In a final written decision, the Board agreed and rejected Patent Owner’s proposed claim construction and arguments assailing the prior art disclosures while finding while finding all challenged claims unpatentable.
- Successfully Defended IPR — Successfully represented Aegis Therapeutics and real-party-in-interest ARS Pharmaceuticals in defending against an IPR challenge to one of their core patents covering methods of treatment of type-1 hypersensitivity reactions, including anaphylaxis, using a low-dose intranasal epinephrine spray. After a full trial, the Patent Trial and Appeal Board upheld key claims directed to treatment of anaphylaxis. Amphastar has appealed the decision, and Mintz continues to represent Aegis and ARS at the Federal Circuit in this appeal.
- Defense of Multiple IPRs — Digital Content Protection Technology: Representing Koninklijke Philips N.V. and Philips North America LLC (Philips) in defending eight IPR petitions filed by TCL Communications and Intel Corporation. The petitions were filed in response to enforcement litigation filed by Mintz on behalf of Philips at the International Trade Commission and in District Courts. The Patent Trial and Appeal Board denied institution to all five petitions filed by TCL and one of the three petitions filed by Intel. The remaining two Intel IPRs are active. (IPR2021-327, -328, -370, -495, -496, -497, -498, -547)
- Successfully Defended IPRs — Voice Driven Technologies: 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.
- Successful Denial of Institution — Video Compression Standards: 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. (HEVC standard essential patent). PTAB denied institution of the petition in August 2019 which was filed in June by Unified Patents. IPR2019-00726
- Successfully Challenged Validity — E-commerce platforms: 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, IPR2018-01012, IPR2018-01014
- Successful Denial of Institution — Packet Switched Networks Through their Israeli IP Counsel, RAD Data Communications engaged Mintz to defend against a preemptive petition for inter partes review challenging a patent covering one of RAD’s core technologies. The PTAB issued a decision denying institution of the petition after reviewing the Patent Owner Preliminary Response. IPR2016-01848
- Successful Defense of Multiple IPRs — Individually Formed Footwear: Mintz Levin represented respondent in two IPRs challenging patents directed to individually formed footwear and a related method. PTAB denied institution in response to one of the petitions and entered a Final Written Decision in favor of our client, preserving all challenged claims, in the other. IPR2015-01769, IPR2015-01770
- 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 the proceedings were received in June and August 2017 and confirmed validity of all but 2 of 107 challenged claims. PTAB's determination was upheld on appeal to the Federal Circuit. IPR2016-00386, IPR2016-00387, IPR2016-00388, IPR2016-00389, IPR2016-00390, IPR2016-00391, IPR2016-00393, IPR2016-00394, IPR2016-00395, IPR2016-00687, IPR2016-00691, IPR2016-00708, IPR2016-00770, IPR2016-00786
- Successfully Challenged Validity in IPR Proceedings — Automatically Adjusting Automotive Headlights: Mintz successfully represented Petitioners SL Corporation and Hyundai Motor America, Inc., in two inter partes review proceeding challenging the validity of a patent directed to automatic adjustment of automotive headlights based on signals from inertial sensors and/or potentiometers. The PTAB invalidated all challenged claims in the patents. IPR2016-00193, IPR2016-00079
- Successfully Challenged Validity in IPR Proceedings — Adjustable Focus Eyeglasses: Successfully represented Petitioners Adlens USA, Inc., and Adlens, Ltd., in two inter partes review proceedings challenging the validity of patents covering fluid filled, adjustable eyeglass lenses. The PTAB invalidated all challenged claims in the patents. IPR2015-01821, IPR2015-01824
- Successful Defense of Multiple IPRs — Capacitors: Mintz is defending American Technical Ceramics Corp. (ATC) and AVX Corporation in three inter partes review trials initiated by Presidio Components, Inc., against three US patents concerning capacitor technologies and owned by ATC and AVX. One of these IPRs was denied institution and the PTAB issued a Final Written Decision in a second preserving all challenged claims. IPR2015-01330, IPR2015-01331, IPR2015-01332
- Patent Owner Victory at the Court of Appeals: 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.
- Successfully Challenged Validity in IPR Proceeding — Bed Spring: Mintz successfully represented Petitioner ACE Bed Co., Ltd., in an inter partes review proceeding challenging the validity of a patent assigned to Sealy Technology LLC relating to bed springs. The PTAB issued a Final Written Decision invalidating all challenged claims. IPR2014-01119
- Successful Defense and Institution Denial of Multiple IPRs — Point-to-Point Communication Over Computer Networks: Mintz successfully defended 17 inter partes reviews instituted against patents owned by our client, Straight Path, and denied institution of three others. All patents concern technology for facilitating point-to-point communications over computer networks. Petitioners in these matters were Samsung Electronics Co., Ltd.; Cisco Systems, Inc., LG Electronics, Inc.; Toshiba Corp.; VIZIO, Inc.; Verizon Communications, Inc.; Hulu, LLC; and Avaya Inc. IPR2014-01366, IPR2014-01367, IPR2014-01368, IPR2015-01014, IPR2015-01015, IPR2015-01017, IPR2015-01406, IPR2015-01407, IPR2015-01397, IPR2015-01398, IPR2015-01400, IPR2015-01006, IPR2015-01007, IPR2015-01011, IPR2015-00196, IPR2015-00198, IPR2015-00209, IPR2013-00246A
- Represented ParkerVision in defense of 6 IPR petitions filed against the company's 6,091,940 patent, titled "Method and system for frequency up-conversion". Saved a significant percentage of claims, winning 4 out of 6 IPRs, and the wins were affirmed at the Federal Circuit. (IPR2015-01828, 01829, 01831, 01832, 01833, 01834)
Case Study
Mintz defended Israeli telecom company RAD Data Communications against a USPTO petition for inter partes review (IPR) that challenged a patent covering one of RAD’s core technologies. The Patent Trial and Appeal Board issued a rare ruling denying institution of the IPR.
Case Study
Mintz protected clients’ patents related to the cholesterol drug Livalo®. Mintz defended against three IPRs filed by generic manufacturers that had filed Abbreviated New Drug Applications (ANDA) with the FDA and secured Patent Trial and Appeal Board denials of institution of the generic companies’ IPR petitions.
Case Study
Mintz’s work for ELM 3DS at the patent office enabled ELM to continue patent infringement litigation in federal court in Delaware. Mintz attorneys took over inter partes reviews (IPRs) challenging the validity of ELM’s patent claims after the IPRs were instituted.
Case Study
Mintz secured a rare US Court of Appeals for the Federal Circuit ruling that entirely reversed a Patent Trial and Appeal Board decision. The PTAB had canceled each of the challenged claims of Straight Path IP Group’s patent for protocols for establishing communication links through a network.
Case Study
Mintz prevailed in a Federal Circuit appeal regarding Straight Path IP patents that facilitate real-time communications between Internet users. The win against eight accused infringers affirmed PTAB decisions upholding the validity of Straight Path’s patent claims.