Representing Celerity IP in licensing and enforcement matters for 3G, 4G, and 5G SEPs. Celerity IP is the exclusive licensing agent for SEPs held by ASUS and Innovative Sonic. Mintz filed the first campaign enforcement action in E.D. Tex. in late June 2023. Mintz has been assisting Celerity IP since the company’s inception, including in evaluating the licensing opportunity and in the acquisition of such rights.
Representing an owner of HEVC (H.265) and VVC (H.266) SEPs in licensing, valuation, and potential enforcement.
Representing pool administrator for licensing, valuation, and monetization of SEPs in audio codec (AAC, MPEG-H), ATSC, Qi, and various other standards.
Represented patent pool administrator for WiFi6 rate setting and bilateral licensing, along with various economic FRAND licensing experts such as David Kennedy from BRG and Scott Weingust from Stout.
Represented patent pool administrator with respect to standard essential portfolio evaluation and rate setting related to 4G and 5G technology and potential enforcement in the US, UK, Europe, and Asia.
Serving as the independent evaluator for Access Advance, assessing the standard essentiality of patents focused on video codec technologies. Our work includes assessing the standard essentiality of patents with respect to Motion Picture Expert Group (MPEG) High Efficiency Video Coding (HEVC) / H.265 and Versatile Video Coding (VVC) / H.266 standards.
Represented Complainant Netlist, Inc., a California memory module company, in an SEP enforcement action at the ITC for the JEDEC standard related to memory modules. Asserted several patents against the Korean-based memory giant SK hynix, which claims inventions essential to the JEDEC, DDR4, RDIMM, and LRDIMM standards. Following an evidentiary hearing in July 2019, the administrative law judge issued an Initial Determination in October 2019, finding infringement of one of Netlist’s patents, deeming it essential to the JEDEC LRDIMM standard, and recommended a limited exclusion order be issued. (ITC, 337-TA-1089).
Represented patent owner InterDigital in defending a video encoding and decoding patent in an IPR filed by Unified Patents LLC. PTAB denied institution soon after the filing of the patent owner’s Preliminary Response. IPR2021-00102.
Filed an amicus brief with the Court of Appeals for the Federal Circuit on behalf of client InterDigital in the Ericsson v. Samsung case. The filing addressed issues of comity and jurisdictional sovereignty in supporting an “anti-anti-suit” injunction issued in Texas preventing Samsung from enforcing a Chinese-issued anti-suit injunction that attempted to bar Ericsson from pursuing infringement allegations on telecommunications SEPs in the US courts.
Represented GE Video Compression in defense of a patent on improved techniques for using “binary arithmetic coding” to compress data that has been incorporated into leading video compression standards. (HVEC SEP). In August 2019, PTAB denied institution of the petition, which was filed in June by Unified Patents. IPR2019-00726.
Represented InfoBridge in defending an IPR petition filed against the company’s ’772 patent, a standard essential patent directed to a method of constructing a merge list. The USPTO concluded that Samsung did not prove, by a preponderance of evidence, that claims 1 – 7 were unpatentable. IPR2017-00099, IPR2017-00100.
Represented Graphics Properties Holdings, Inc. in an ITC action based on graphics patents originally created by Silicon Graphics based on their work while members of the Khronos Group. Respondents raised FRAND defenses based on the Khronos membership agreement, and Mintz successfully demonstrated that GPH had no FRAND obligations. 337-TA-884.
Represented M & K Holdings to defend a patent directed to an image-encoding apparatus and a method of decoding moving pictures (HVEC standard essential patent). IPR2018-00696, IPR2018-00697, IPR2018-00698.
