Technology

Transactional - Mergers & Acquisitions

• Represented Dassault Systèmes in multiple transactions, including its $425M acquisition of IQMS, Inc. and its acquisition of No Magic Incorporated.
• Represented Ramland Holdings in connection with the sale of a data center in Orangeburg, New York.
• Represented Administrative Software Applications, Inc. in its sale to a private equity firm.
• Represented ATN International, Inc., the parent company of Sovernet Communications, in Sovernet's acquisition by Oak Hill Capital Partners and in its $145M acquisition of the membership interests of Caribbean Assets Holdings LLC, the holding company for the Innovative Group of companies operating cable TV, Internet and landline services primarily in the U.S. Virgin Islands from the National Rural Utilities Cooperative Finance Corporation.
• Represented Stran Technologies Inc. in its sale to Corning Incorporated.
• Represented Netsmart Technologies, Inc., a behavioural health and social services health IT supplier, in its acquisition of HealthMEDX, a Missouri-based developer of electronic medical record (EMR) solutions for long-term and post-acute care.
• Represented Right Networks, a SaaS premier provider of cloud solutions to accountants and small and medium-sized businesses, in selling a controlling interest in the company to BV Investment Partners (BV), a middle-market private equity firm.
• Represented Buildium, a SaaS property management platform, in its strategic investment from Sumeru Equity Partners.
• Represented Time Inc. in numerous transactions, including its spin-off from Time Warner,  the acquisitions of Adelphic Inc. (an automated advertising buying platform); Viant Technology, Inc. (a people-based advertising technology company); Drive and Fast Lane Daily (two automotive focused YouTube channels); the formation of SI Play and the related acquisition of Faster Than Monkeys, Inc., (a software sports application company); the acquisition of Cozi, Inc. (an organizing application for families); the acquisition and subsequent disposition of inVNT (a global brand communications agency focused on experiential advertising); the sale of Essence Communications Inc.; and various investments (2014-2018).
• Represented Vringo, Inc. (NASDAQ:VRNG), a company engaged in the innovation, development and monetization of intellectual property and mobile technologies, in its acquisition of International Development Group, an international development consulting firm.
• Represented Visible World, Inc., a media and advertising company, in its merger with Comcast Cable Communications, LLC (NASDAQ:CMCSA).
• Represented Chyron Corporation, a leading provider of on-air graphics systems, in its acquisition of Hego Group, a leading provider of powerful graphics and data visualization solutions for TV and sports, to form ChyronHego (NASDAQ:CHYR) and later represented the company in its $120M merger with Vector Capital Partners.
• Represented Enviance, a cloud-based computer software company, in its merger with Battery Ventures.
• Represented iModules Software, a leading online SaaS Constituent Engagement Management provider for educational institutions, in its merger with Leeds Equity Partners.
• Served as Special Counsel to private equity firm Clarion Capital Partners, LLC in multiple acquisitions, including the acquisition of Morovia IT, a language services technology company and SQAD Inc., an independent source in the US for TV, radio and digital advertising cost analysis.
• Represented DataMarket ehf, a data aggregation company, in its merger with Qlik Technologies Inc.
• Represented Stifel Nicolaus (NYSE:SF) as a financial adviser in the merger between Aeroflex Incorporated, a communications equipment maker, and Cobham plc, an aerospace and defense supplier.
• Represented the Management Team of MacDermid, Incorporated (NYSE: MRD) in the company’s $1.8B merger with Platform Acquisition Holdings Limited (LSE: PAH).

Patent Litigation and IPRs

• 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, IPR2021-328, IPR2021-370, IPR2021-495, IPR2021-496, IPR2021-497, IPR2021-498, IPR2021-547
• Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (337-TA-1222) – Representing DivX, a video codec company headquartered in San Diego, in enforcing patents before the ITC, in the District of Delaware and Eastern District of Texas, and in German and Brazilian courts. The asserted patents involve innovations relating to internet video and streaming media. LG and Samsung settled prior to the ITC evidentiary hearing which was held with remaining respondents in July 2021.
• 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.
• 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.
• 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
• 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
• 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
• 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
• Preservation Wellness Technologies, LLC v. NextGen Healthcare Information Systems, LLC, 2:15-cv-01562 (E.D. Tex) – Successfully defended NextGen, obtaining dismissal of the complaint after oral argument. With U.S. Federal Circuit Judge William Bryson presiding over the case, the court held that the patent at issue was not patent-eligible under the U.S. Supreme Court’s Alice decision. Mintz also represented NextGen on appeal to the Federal Circuit and the decision was upheld.
• Connectsoft, Inc. v. NEEO, Inc., 2:16-cv-00548 (E.D. Tex) – Successfully represented the defendant in a patent infringement lawsuit before Judge Gilstrap relating to radio frequency technology. Resulted in a favorable settlement in 2017.
• 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.

Transactional - Venture Capital

• As Placement Agent, represented Templum Markets, LLC, a wholly owned subsidiary of Templum Inc., in multiple transactions, including the primary equity offering to recapitalize the St. Regis Aspen Resort, resulting in what Templum believes to be the first digital security tokenization of a trophy real estate asset, and the launch of Aspen Digital Inc., a Tokenized Asset Offering (TAO) and digital Regulation D 506c security open to accredited investors, on Templum’s trading platform.
• Represented NBD Nanotechnologies, Inc. in its Series B financing led by BASF Venture Capital and Henkel AG.
• Represented Remezcla, LLC in its $11M Series A financing led by Hemisphere Media Group.
• Investor-side representation in the $3.5M Series A financing of Breach Intelligence, Inc. led by Strategic Cyber Ventures, LLC.
• Investor-side representation in the $5M Series B financing of ID Dataweb led by Strategic Cyber Ventures, LLC.
• Represented T-REX Group, Inc. in its $10M Series B financing led by Safeguard Scientifics (NYSE:SFE) and Ecosystem Integrity Fund.
• Represented AttackIQ in its approximately $9M Series A financing led by Index Ventures; Qualcomm Ventures; and Telstra Ventures.
• Represented BQE Partners, Inc. in the private placement of Loeb Enterprises II LLC.
• Represented Grandparents.com in its Series D financing led by VB Funding, LLC.
• Represented RainFocus, Inc. in its $1.5M Series A financing.
• Represented Swish Analytics, Inc. in its $1.1M seed financing led by Elysian Park Ventures, LLC.
• Represented Conduce Inc. In its $3M seed extension as well as its $3M seed financing led by individual investors.
• Represented Skillz Inc. in its $15M Series B financing led by Wildcat Capital Management.
• Represented The Light Phone Inc. in its private placement.
• Represented Acorns Grow Incorporated in its $23M Series C financing led by Greycroft Ventures; e.Ventures; Sound Ventures; Garland Capital; and MATH Venture Partners.

Litigation

• Defended a global electronics manufacturer in a number of consolidated class action antitrust cases.
• Represented a software company in a class action relating to alleged fraudulent revenue recognition. The jury returned a verdict for the class and the case was subsequently settled with motions for a new trial pending.
• Served as lead counsel for a major telecommunications carrier in dozens of district court class action cases under section 332 of the Telecommunications Act of 1996, successfully reversing citing decisions of city and county government agencies denying deployment of cellular network systems.
• Advised a large telecommunications trade association and large cable operator on the applicability of CFPB enforcement jurisdiction under Dodd-Frank.
• Served as co-counsel for for an American global communications company in a highly-publicized lawsuit brought by a Boston television affiliate seeking injunctive relief to compel the renewal of its affiliation beyond its scheduled expiration at the end of 2016.
• Represented one of the largest cable companies in the United States and succeeded in negotiating a favorable settlement of false advertising and unfair and deceptive business practices claims asserted by the Massachusetts Attorney General.
• Lead counsel for major telecommunications carrier in ground-breaking class action case applying Section 253 of the Telecommunications Act of 1996 for the first time to enjoin city from implementing excessive regulatory barriers to deployment of wireless communications network.
• Represented developer of real-time operating system in complex arbitration, including 21-day hearing, of claims of copyright infringement in emerging area of law governing copyrightability of application programming interfaces (APIs).
• Obtained a defense verdict on all claims after a jury trial on behalf of several public company officers and directors in a securities fraud case in federal court in Massachusetts.
• Represented the founder and former CEO of a telecommunications company in an action arising out of allegations concerning the backdating of employee stock options.
• Represented the board of directors of a company that designed and tested semiconductors in preparing and obtaining confirmation of a Chapter 11 plan of reorganization.
• Represented a technology and marketing services company in numerous 365 sales of substantially all of its assets and the confirmation of its subsequent Chapter 11 plan.
• Represented Comcast, as successor to AT&T Broadband, in a lawsuit alleging that AT&T Broadband misrepresented the nature of the network access fee for interstate calling that AT&T imposed on its local phone service customers. We obtained dismissal of all claims by the trial court and won a decision on appeal affirming the dismissal.
• Represented Yahoo! in multi-juristidictional litigation regarding allegations of a breach of a brand licensing agreement. Settled favorably for the client.
• Successfully prosecuted alter-ego arbitration. Navigated complex array of obstructive discovery tactics to recover documents from off-shore shell companies. Obtained order from US Bankruptcy Court lifting stay on arbitration and remanding case to tribunal following defendant's bankruptcy filing. Obtained positive finding of alter-ego liability against CEO of defendant corporation and judgment of over $26 million.
• Represented a national telecommunications company in an appeal from a state agency ruling that threatened to prevent the sale of a major product. A week before trial, the state Attorney General acknowledged that the agency had no defense and consented to the entry of a declaratory judgment in favor of the client.
• Represented foreign claimant in multi-year ICDR/AAA arbitration regarding breach of international sales agreement. Obtained award and judgment of over $21,000,000 including all damages sought plus attorneys' fees and interest.
• Conducted internal investigation into Southeast Asian travel and entertainment of Algerian military officials for publicly traded US company that sells telecommunications equipment to Algerian military.
• Represented L-3 Communications Corp. in an appeal of a patent infringement action involving CMOS image sensing chips.
• Mintz Levin defended ServiceSource in litigation by former customer FusionStorm—a key industry player and large account—challenging competence of ServiceSource to perform services within its core competency and seeking full refund of fees paid under agreement for a three-year relationship. This was ServiceSource’s first lawsuit challenging the key services it provides to all clients, and its opponent was a frequent and aggressive litigator. We filed a counter-complaint and positioned the case for a quick and very favorable confidential resolution within about seven months.
• In complex civil RICO case, represented Taiwanese creditor in claims against 34 foreign and domestic defendants. Successfully defeated over 30 motions to dismiss, managed millions of pages of written discovery, over 40 depositions on two continents and hundreds of discovery disputes before two court-appointed Special Masters. Defeated summary judgment and in limine motions. Favorably settled case at commencement of trial.
• Served as lead counsel for a major telecommunications carrier in multidistrict litigation involving 20 separate antitrust class action suits that were consolidated into a single MDL. The suits alleged that the cable industry’s practice of leasing set-top boxes to customers who also purchase cable television services constitutes an illegal tying arrangement under the antitrust laws.
• Represented SeQual Technologies, Inc. in a patent infringement lawsuit, obtaining a favorable settlement.
• Represents the Sierra Nevada Corporation in various intellectual property matters.
• Represented a cable network in a dispute against an Internet programming distributor. The two companies had an agreement that allowed the distributor to carry the cable network under certain circumstances. The cable network terminated for breach of the terms. The Internet programming distributor sued under Section 1 of the Sherman Act.
• Obtained summary judgment on behalf of Yelp! in a putative class action alleging violations of the California Invasion of Privacy Act (CIPA).

Transactional

• Served as lead counsel for an American telecom company in a purported nationwide antitrust class action. The suit alleged that the cable operator’s practice of leasing set-top boxes to customers who also purchase cable television services constitutes an illegal antitrust tie.
• Represented major cable television providers and major programming networks in connection with a high-profile merger proceeding before the Department of Justice and state attorneys general.

Patent Prosecution & Strategic Counseling

• Serve as sole patent counsel to an innovator in open source software as it evolves to include proprietary offerings in addition to its substantial open source catalog. We have advised the company in revising its patent strategy and authored continuations on patents as well as created new families to provide protections around the company’s most innovative and valuable advances. Mintz Levin is working with the company’s engineers and senior management to creatively guide the company through expansion in both of its user bases – paying versus open source.
• Representing Fair Isaac/FICO, the largest financial data and credit score analytics company, in IP matters, including patents, administrative appeals and strategy in securing innovative approaches to determining financial relationships, credit scoring, advanced fraud detection and reporting, using self-correcting artificial intelligence systems and machine-learning models
• Represent as primary patent counsel a leading supplier of injection molding equipment for the plastics industry. The company's equipment is used to produce packaging for beverages, medical devices, and consumer electronics, and includes closures and specialty thinwall packaging. The Mintz team helped the company to clear a newly-developed product for market, working to reduce the company’s overall risk by analyzing competitor patents and the complicated structure of the new product, in a highly compressed timeframe to enable timely launch of the product.