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
USPTO “Forecloses” on Mortgage Processing Patent under Alice
February 25, 2016 | Blog | By Brad M Scheller
Patent owners continue to face an uphill battle at the Patent Trial and Appeal Board. According to U.S. Patent Office statistics as of December 31, 2015, a majority (72%) of the 529 Inter Partes Reviews (IPR) proceeding to trial and receiving Final Written Decisions ended in all examined claims being invalidated.
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Federal Circuit Deems IPR Constitutional: The Patent Office Can Correct Its Own Mistakes
December 3, 2015 | Blog | By Brad M Scheller , Michael Renaud, Ping Hu
Yesterday the Federal Circuit ruled in MCM Portfolio LLC v. Hewlett-Packard Company that vesting the Patent Office with power to take back previously-conferred patent rights through inter partes review does not violate Article III or the Seventh Amendment.
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PTAB Summer Package of Proposed Rule Changes Now Available and Open for Public Comment
August 24, 2015 | Blog | By Brad M Scheller
On March 31 we posted about the Patent Office rolling out a series of rulemakings for improving post-grant proceedings before the Patent Trial and Appeal Board (PTAB) pursuant to public feedback to a Request for Comments published by the Office last June.
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PTAB Issues Representative Order Clarifying Motion to Amend Analysis in Idle Free Systems
July 21, 2015 | Blog | By Brad M Scheller
Yesterday the Patent Trial and Appeal Board (“Board”) added a recent order to its list of Representative Orders, Decisions, and Notices.
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Fed Circuit Reverses PTAB Decision in IPR Proceeding
June 22, 2015 | Blog | By Arun K. Goel, Brad M Scheller
On June 16, the Federal Circuit issued its first-ever reversal of a Patent Trial and Appeal Board decision in an America Invents Act post-grant proceeding. The opinion, drafted by Chief Judge Prost and joined by CAFC Judge Lourie and E.D. Tex. Judge Gilstrap, provides considerable guidance on claim construction and claim amendments in practice before the PTAB.
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New USPTO Expedited Patent Appeal Pilot Program
June 19, 2015 | Blog | By Christina Sperry, Brad M Scheller
On June 15, 2015, the United States Patent and Trademark Office (“USPTO”) issued Notice in the Federal Register announcing a new pilot program, the Expedited Patent Appeal Pilot.
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PTAB Grants Fourth Motion to Amend in an IPR Proceeding
June 16, 2015 | Blog | By Brad M Scheller
For only the fourth time in its history, the Patent Trial and Appeal Board (“PTAB”) has granted a motion to amend in an inter partes review (“IPR”) proceeding, finding all substitute claims proposed by the patent owner patentable.
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PTAB Issues 'Quick Fix' Rule Package, Effective Immediately
May 28, 2015 | Blog | By Brad M Scheller , Yogesh Patel
On March 31 we posted about the Patent Office rolling out a series of rulemakings for improving post-grant proceedings, beginning with a first rule package of “quick fixes” this spring.
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PTAB Clarifies Protocol for Expanded Post-Grant Panels
May 13, 2015 | Blog | By Brad M Scheller
Today the Patent Trial and Appeal Board (“Board”) posted on its website Revision 14 of its Standard Operating Procedure 1 (SOP 1). SOP 1 covers the assignment of Administrative Patent Judges to merits panels, interlocutory panels, and expanded panels in appeals, interferences, and AIA Reviews.
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The PTAB Explores Estoppel in New Representative Decision
May 11, 2015 | Blog | By Kevin Amendt, Brad M Scheller
The Patent Trial and Appeal Board ("the Board") recently announced the addition of its March 26, 2015 decision in Dell, Inc. et al. v. Electronics and Telecomms. Res. Inst., IPR2015-00549 (“the ‘549 IPR”) to its online list of Representative Orders, Decisions, and Notices.
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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
Nov
14
2024
Guarding the Intangible: Trade Secrets as Catalysts For Valuation and Growth
Battery Forum Conference - Volta Foundation
Virtual
Speaker
Speaker
Recognition & Awards
Included on the New York Super Lawyers: Rising Stars - Intellectual Property Litigation list (2014 - 2018)
