Brad is a partner in the New York office of Mintz specializing in intellectual property litigation and representing clients before the United States Patent and Trademark Office and in United States federal district and appellate courts. He serves as lead counsel before judges and juries in United States district courts, the International Trade Commission and the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office.
In addition to his litigation practice, Brad serves as a strategic counselor to start-up ventures and established businesses in the mechanical and electrical arts, with a deep interest and focus in high-density EV battery technologies and trade secret registration, management and protection.
Brad is a Member of the Firm’s Energy & Sustainability Practice with a focus on representing EV battery companies on all aspects of intellectual property, licensing and technology growth, management and protection.
Brad is also co-editor of Mintz’ intellectual property writing program and, in his spare time, plays upright and electric bass in several original and cover bands in New York City and surrounding areas.
Experience
- Represented Mullen Industries in federal district court and in defense of 12 inter partes review petitions against Apple. Defeated IPRs filed by Apple against four different patents and the case settled thereafter to avoid significant litigation expenditure. Mullen Industries, LLC v. Apple, Inc., No. 5:23-cv-00437 (N.D. Cal. 2022).
- Represented Kostopoulos Investment Holdings against patent infringement allegations with respect to shockwave therapy technologies; drove dispute to favorable settlement before initiation of claim construction proceedings. SoftWave Tissue Regeneration Technologies, LLC v. Dr. Har Hari S. Khalsa, DC, d/b/a Transformational Healing Universe, Thomas Kostopoulos, and Kostopoulos Investment Holdings, LLC d/b/a StemWave, Case No. 2:22-cv-07810-MCS-RAO (C.D.Cal. 2022).
- Represented WePower Technologies in trade secret misappropriation litigation alleging theft of bankruptcy assets relating to energy harvesting technology and achieved favorable settlement. WePower Technologies LLC v. GenerEn, LLC, 7:22-cv-03364 (S.D.N.Y. 2022).
- Represented Nanofiber Solutions against patent infringement allegations with respect to electrospun nanofiber wound-healing devices; drove case to favorable settlement following dispositive claim construction ruling in favor of Defendants. Acera Surgical, Inc. et al. v. Nanofiber Solutions, LLC et al., 1:20-cv-00980-CFC-JLH (D. Del. 2020).
- Represented Interactive Digital Solutions against patent infringement allegations with respect to patient monitoring systems; drove case to favorable settlement following disclosure of non-infringement positions and invalidity contentions. CareView Communications, Inc. v. Interactive Digital Solutions, LLC, No. 4:2021-cv-07061-HSG (N.D.Cal. 2021).
- Served as lead counsel on behalf of the defendant in direct-competitor, 2-patent infringement litigation involving aesthetic laser technology and successfully drove the parties’ disputes to settlement in eight months and prior to the start of expert discovery. Solta Medical, Inc. v. Lumenis, Inc. et al., No. 19-11600-DJC (D. Mass. 2019).
- Served as lead counsel for American Technical Ceramics and AVX Corporation in a 10-day jury patent trial concerning passive electronic components in the Eastern District of New York. The jury returned a verdict of infringement for plaintiffs. Am. Tech. Ceramics Corp. et al. v. Presidio Components, Inc., 14-06544-KAM (E.D.N.Y. 2014).
- Represented owner of patents directed to assembly and fastening technologies against automotive manufacturers and suppliers in the District of Delaware. (Wildcat Licensing WI LLC v. General Motors et al., 1:19-cv-00833-MN-JLH, 1:19-cv-00834-MN-JLH, 1:19-cv-00839-MN-JLH, 1:19-cv-00840-MN-JLH ,1:19-cv-00842-MN-JLH, 1:19-cv-00843-MN-JLH, 1:19-cv-00844-MN-JLH, 1:19-cv-00845-MN-JLH, 1:19-cv-00846-MN-JLH) (D. Del.)).
- Served as lead 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. 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.)).
- Represented Intellectual Ventures II LLC in IPR proceedings concerning encapsulated stator motor technology (IPR2017-01537, IPR2017-01558).
- Lead counsel for complainant in Certain Thermoplastic-Encapsulated Electric Motors, Components Thereof, and Products and Vehicles Containing Same (337-TA-1052).
- Represented Patent Owners American Technical Ceramics Corp. and AVX Corporation in IPR proceedings concerning technology for multilayer capacitor structures (IPR2015-01330, IPR2015-01331).
- Represented Patent Owner Footbalance System Oy in IPR proceedings concerning shoe insoles (Petition denied in IPR2015-01770; all claims upheld in IPR2015-01769).
- Represented owner of electronic payment system patents in patent infringement litigation. MoneyCat v. PayPal, Inc., 14-2490 (N.D. Cal.).
- Represented and achieved successful settlement for video-game developer and manufacturer in four-patent infringement litigation concerning motion-controlled video gaming (Shinsedai Co. Ltd. v. Nintendo Co., Ltd., 11-2799 (S.D. Cal.)).
- Represented Jan Marini Skin Research Inc., Peter Thomas Roth, Inc., and Peter Thomas Roth Labs LLC in a patent infringement case relating to certain hair growth products. Allergan, Inc. v. Photomedex, Inc., et al., 8:07-cv-01316 (CDCA 2009).
viewpoints
Recent USPTO Report Suggests Greater Consistency and Predictability in Patent-Ineligible Subject Matter Rejections
April 28, 2020 | Blog | By Brad M Scheller , Meena Seralathan
Last week, the US Patent and Trademark Office (“USPTO”) released a report detailing its findings on how the U.S. Supreme Court decision in Alice Corp. v. CLS Bank International, as well as subsequent USPTO guidance on 35 U.S.C. § 101 rejections, has affected rates of, and variability between, office action rejections.
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Informative Whirlpool Decision Reaffirms Importance of Secondary Considerations
April 21, 2020 | Blog | By Brad M Scheller , Courtney Herndon
Recently on April 14, 2020, the Patent Trial and Appeal Board (“Board”) designated Ex parte Whirlpool Corp., Appeal 2013-008232 (Oct. 30, 2013) “Informative”. In Whirlpool, the Board reversed the Examiner’s obviousness rejection of claims 1, 4, 6, and 8 of U.S. Patent No. 6,082,130 (“the ’130 patent”), finding that the Patent Owner, Whirlpool Corporation, established a nexus between its objective evidence of non-obviousness and the claimed invention.
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Recently Designated Precedential PTAB Decision Confirms Objective Indicia of Nonobviousness Can Rescue Patents from Invalidation at the PTAB
April 21, 2020 | Blog | By Brad M Scheller , Meena Seralathan
Last week, the Patent Trial and Appeal Board (“PTAB”) designated a January 24, 2020 decision, finding objective indicia of nonobviousness, such as evidence of long-felt need and industry praise, saved a patent owner’s amended claims from invalidation, as precedential.
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Mintz Rings in 2020 with Top 10 Recognition for ITC Practice
January 6, 2020 | Blog
Mintz is recognized as among the top ten firms in ITC Section 337 litigation by Patexia in its inaugural "ITC Intelligence Report". We are pleased to be among the firms included in this publication and thrilled that it has come on the heels of a great year at the ITC for the Mintz team.
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Can Infringement Contentions be Amended to Add New Claims Resulting from an Ex Parte Reexam Filed after IPRs Invalidated Some but Not All Claims?
November 5, 2019 | Blog | By Brad M Scheller
Judge Gilliam of the Northern District of California recently answered this question and provided helpful guidance on the interplay of IPRs, reexaminations and district court litigation. In IXI Mobile (R&D) Ltd., et al., v. Samsung Elec. Co. Ltd. and IXI Mobile (R&D) Ltd., et al. v. Apple Inc., Judge Gilliam denied plaintiffs’ (“IXI”) motion for leave to amend their infringement contentions and asserted claims because IXI was not diligent in identifying new contentions or new accused products.
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Precedential PTAB Panel Says Petitioners Can Join Their Own Earlier-Filed IPRs and Join New Issues in Limited Circumstance
March 19, 2019 | Blog | By William Meunier , Brad M Scheller
In its first decision since its inception, the Precedential Opinion Panel (“POP”) for the U.S. Patent Trial and Appeal Board (“Board”), in Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00914, held that under 35 U.S.C. § 315(c) the Board has discretion to allow a party, in limited circumstances, to join its own earlier-filed inter partes review (“IPR”) and join new issues, even if the party was otherwise time-barred under 35 U.S.C. § 315(b). Specifically, the Board may use this discretion only where fairness requires it and to avoid undue prejudice to a party. The POP nevertheless denied Proppant Express Investments LLC’s (“Petitioner”) motion for joinder as Petitioner’s motion was “a result of Petitioner’s errors,” and therefore did not fall within the limited circumstances it envisioned.
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Supreme Court Holds AIA Did Not Alter the Settled Meaning of “On Sale”
January 22, 2019 | Blog | By Brad M Scheller , Peter Snell
Today the United States Supreme Court unanimously affirmed the Federal Circuit and held that it remains the law under the America Invents Act (AIA) that a confidential sale to a third party can trigger the “on sale” bar to patentability.
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PTAB Adopts the Phillips Claim Construction Standard in AIA Proceedings
October 11, 2018 | Blog | By Brad M Scheller , Daniel Weinger, Courtney Herndon
Today the Patent Trial and Appeal Board announced a final rule changing the claim construction standard for interpreting claims in inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patent (“CBM”) proceedings. The Board retired the broadest reasonable interpretation (“BRI”) standard in favor of the standard used to construe patent claims in federal court and the International Trade Commission (“ITC”) as articulated in Phillips v. AWH Corp. In doing so, the Board announced that it will now consider prior constructions, either from a federal district court or the ITC, in construing a claim term in an IPR, PGR, or CBM, where such prior constructions are timely made of record. This rule change is another positive development for patent owners and should provide for consistent construction of the same term across multiple tribunals going forward.
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PTAB Denies Institution of IPR after Successive Petitions by Unrelated Co-Defendants
September 11, 2018 | Blog | By Brad M Scheller , Daniel Weinger, Courtney Herndon
Last week, the Patent Trial and Appeal Board (the “Board”) denied a second challenge to a patent where the petitioners were co-respondents in an ITC investigation.
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Establishing Obviousness: A Fundamental Case of Evidence Over Arguments
March 1, 2018 | Blog | By Brad M Scheller
The Federal Circuit affirmed the Patent Trial and Appeal Board’s inter partes review decision declaring various claims of patent owner Thales’ U.S. Patent No. 6,474,159 (“the ‘159 patent”) nonobvious.
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News & Press
PTAB Case Highlights Power Of Nonobviousness Arguments
April 24, 2020
Mintz Member Brad Scheller was quoted in an article published by Law360 on the Patent Trial and Appeal Board’s precedential decision in Lectrosonics Inc. v. Zaxcom Inc., which demonstrates that “secondary considerations” evidence of nonobviousness, including industry praise, can prove a successful strategy for saving a patent.
AIA Claim Construction Change To Spur Revamped Strategies
October 11, 2018
This feature story discusses on the U.S. Patent and Trademark Office’s (USPTO) new final rule changing the claim construction standard for America Invents Act (AIA) reviews. Brad Scheller is among the intellectual property attorneys quoted providing commentary.
The Current State of IPR Estoppel
January 5, 2018
Mintz Members Kathleen Carr and Brad Scheller and Associate Inna Dahlin collaborated on an article for Bloomberg Law Patent, Trademark & Copyright Journal about the inter partes review “estoppel” rule, what circumstances may give rise to it, and how the courts can clarify and validate its use.
Fourteen Mintz attorneys have been named New York Super Lawyers for 2017 and thirteen have been named New York Rising Stars. New York Super Lawyers recognizes the top lawyers with the highest degree of peer recognition and professional achievements.
Mintz Partner Plays More Than One Tune
July 20, 2017
Brad Scheller, a Member of the Mintz New York office, is featured in an American Lawyer profile. The article discusses Brad’s intellectual property practice and his passion for music outside the office.
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.
Cuozzo and Its Likely Impact
July 6, 2016
Mintz Member Brad Scheller, Associates Catherine Xu and Linyu Mitra, and Senior Patent Agent Gurneet Singh, authored this IP Frontline article discussing the U.S. Supreme Court case of Cuozzo Speed Techs. v. Lee, and its implications for patent practitioners.
Brad Scheller (Mintz): “The unitary patent will be devalued to an extent because of the UK exit”
June 28, 2016
Mintz Member Brad Scheller engaged in this in-depth Leaders League interview, providing commentary on the impact of the Brexit vote on the European Intellectual Property landscape, particularly as it pertains to the unitary patent and the United Patent Court.
Brad Scheller authored this IPFrontline article on the Patent Trial and Appeal Board’s Final Written Opinion “invalidating all examined claims of a mortgage processing patent as unpatentable for failing to claim patent eligible subject matter.”
Thirteen attorneys from Mintz have been named New York Super Lawyers for 2014 and eleven have been named New York Rising Stars. The list will be published in a special advertising supplement in The New York Times Magazine and in a stand-alone magazine, New York Super Lawyers - Metro Edition.
Events & Speaking
Recognition & Awards
Included on the New York Super Lawyers: Rising Stars - Intellectual Property Litigation list (2014 - 2018)
