Year after year, Michael has been recognized by Patexia as one of the top ten most active and best performing attorneys representing complainants at the International Trade Commission. For more information on this recognition, please click here.

• Certain Semiconductor Devices, Mobile Devices Containing the Same, and Components Thereof (337-TA-1336) – Represented patent owner Daedalus Prime in ITC investigation involving four patents related to semiconductor manufacturing processes used to make FINFET transistors. The case against Samsung was dismissed following a confidential license and settlement agreement. TSMC settled just prior to trial.
• Certain Integrated Circuits, Mobile Devices Containing the Same, and Components Thereof (337-TA-1335) - Represented Daedalus Prime against Samsung Electronics and Qualcomm Corporation in ITC investigation involving four patents related to power management techniques in computer processors. The case against Samsung was dismissed following a confidential license and settlement agreement. Evidentiary hearing involving the remaining parties was held in August 2023 and ultimately settled before a final decision on the merits.
• Certain Graphics Systems, Components Thereof, and Digital Televisions Containing the Same; Inv. (337-TA-1318) – Represented Advanced Micro Devices as their lead counsel in an ITC investigation asserting AMD’s proprietary graphics processing unit (GPU) patents against TCL and Realtek Semiconductor. After a week-long trial, and multiple rounds of briefing to the ALJ and the Commission, the Commission found and upheld the ALJ’s initial determination that all respondents violated Section 337, and issued a limited exclusion order against both TCL and Realtek, as well as a cease-and-desist order against TCL. The limited exclusion order blocks TCL and Realtek from importing "certain graphics systems, components thereof, and digital televisions containing the same” that infringe AMD’s proprietary graphics IP.
• Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (II) (337-TA-1297) – Represented DivX, a video codec company headquartered in San Diego, in enforcing patents before the ITC and in the District of Delaware against Respondent TCL. The asserted patents involve innovations relating to internet video and streaming media, and in the ITC action, Amazon moved to participate as an Intervenor. Also represented DivX in previous ITC investigation involving one of the same patents in which LG and Samsung settled with DivX prior to the ITC evidentiary hearing. These additional filings, in addition to the original filings, and related negotiations resulted in TCL and DivX signing an IP licensing agreement which resolved all pending litigations.
• Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (337-TA-1222) – Represented DivX in a multinational patent licensing enforcement program 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. After that hearing, and before final determination from the ITC, Mintz filed an additional action against TCL at the ITC, Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (II) (337-TA-1297). This additional filing, in addition to the original filings and related negotiations, resulted in TCL and DivX signing an IP licensing agreement which resolved all pending litigations.
• Certain Semiconductor Devices, Products Containing the Same, and Components Thereof (II) (337-TA-1177) - Represented GlobalFoundries as lead counsel at the ITC 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) – Represented Innovative Foundry Technologies as part of a global enforcement strategy to protect five asserted patents relating to semiconductor fabrication and packaging. Respondents for the ITC matter included TSMC, Qualcomm, MediaTek, and Vizio. Cases were simultaneously filed in U.S. District Court and internationally in Germany and China. The investigation resolved favorably prior to the conclusion of discovery.
• Certain Human Milk Oligosaccharides and Methods of Producing the Same (337-TA-1120) – Represented Glycosyn LLC as complainant before the ITC against respondent Jennewein Biotechnologies GmbH, a large global competitor. The complaint alleged unlawful and unauthorized importation and production and/or manufacture of 2'-fucosyllactose oligosaccharides that directly infringe one or more claims of Glycosyn's U.S. Patent No. 9,453,230. Following oral hearing, the Administrative Law Judge issued an Initial Determination finding that Jennewein had infringed claims of Glycosyn’s patent and recommended a limited exclusion order issue, including a certification provision with heightened requirement.
• 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. 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.
• Certain Computing or Graphics Systems, Components Thereof, and Vehicles Containing Same (337-TA-984) – Represented owner of portfolio of graphics processing and microprocessor patents, Advanced Silicon Technologies, LLC, as Complainant in an ITC investigation adverse to a number of automotive manufacturers, and infotainment system and chip suppliers. Respondents include Honda, Toyota, BMW, Audi, Volkswagen, NVIDIA, Texas Instruments, Renesas, Harman International, and Fujitsu-Ten. The investigation instituted in January of 2016 and resolved favorably prior to the conclusion of expert discovery in August of 2016.

• Samsung Electronics Co., Ltd., Micron Technology, Inc., SK Hynix Inc. v. Elm 3DS Innovations, LLC, 2017-2474, 2017-2475, 2017-2476, 2017-2478, 2017-2479, 2017-2480, 2017-2482, 2017-2483, 2018-1050, 2018-1079, 2018-1080, 2018-1081, 2018-1082 (Fed. Cir.) – Successfully represented Elm 3DS Innovations in defending the appeal of highly favorable final written decisions entered by the Patent Trial and Appeal Board (PTAB) in 13 inter partes reviews. PTAB held that petitioners did not establish the unpatentability of 105 claims across 11 patents, and the Federal Circuit affirmed the PTAB’s decisions.
• Preservation Wellness Technologies LLC v. NextGen Healthcare Information Systems LLC, et al, 2016-2193, 2016-2194, 2016-2195 (Fed. Cir.) - Successfully argued at the Court of Appeals for the Federal Circuit to affirm an Eastern District of Texas ruling from May 2016 that held unpatentable a medical records patent asserted by Preservation Wellness against long-time client NextGen Healthcare. Mintz also argued on behalf of co-appellees Allscripts Healthcare Solutions Inc. and Epic Systems Corp. NextGen Healthcare provides electronic health record, financial, and health information exchange solutions for myriad healthcare organizations and the infringement allegations threatened “Patient Portal,” a key component of the company’s service.
• 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.

• Coretek Licensing, LLC v. Preply, Inc. (D. Del., 1-21-cv-01657) - Represented defendant against allegations of patent infringement concerning methods of enabling a network connection. Obtained dismissal of the complaint on behalf of our client within a few months of the complaint’s filing.
• Gamehancement LLC v. Verimatrix, Inc. (D. Del., 1:24-cv-00221) - Defended a cybersecurity company in obtaining early dismissal of patent infringement claims related to multi-layer copy protection schemes.
• Nanoco Technologies, Ltd. v. Samsung Electronics Co., Ltd., et al. (E.D. Tex., 2:20-cv-00038) - Represented British nanotechnology company Nanoco Technologies, Ltd., a world leader in the development and manufacture of cadmium-free quantum dots and other nanomaterials, in a patent infringement case involving the synthesis of quantum dots, and use of quantum dot film resins in electronic display devices. The Mintz team also represented Nanoco in corresponding IPR proceedings before the USPTO. The firm secured a $150 million settlement for the client, which put an end to all global litigation between Nanoco and Samsung.
• Acera Surgical, Inc. et al v. Nanofiber Solutions, LLC, et al (D. Del., 1:20-cv-00980) - Represented multiple defendants including Nanofiber Solutions and the Research Foundation for the State University of New York as defendants against allegations of infringing five patents related to wound closure innovations using nanofiber technology. The parties amicably settled.
• Solta Medical, Inc. v. Lumenis, Inc. et al (D. Mass., 1:19-cv-11600) - Defended Lumenis in a patent infringement case involving two U.S. patents related to ablative laser tissue treatment. The case was brought by a direct competitor in the field of aesthetic medicine surgical instruments, dermatology medical devices, and related technologies. The case settled favorably following a Markman hearing and after Mintz filed a motion for summary judgment that there would be no pre-suit damages.
• Innovative Foundry Technologies LLC v. Semiconductor Manufacturing International Corporation, et al. (W.D. Tex., 6:19-cv-00719) - Represented Plaintiff in enforcing four patents related to semiconductor manufacturing technology. The case proceeded through Markman hearing where claims were construed favorably in all four patents and a “not invalid” determination issue in response to an attempt to invalidate one patent entirely. Successfully transferred declaratory judgment filed in W.D. Tex, and all claims between IFT and SMIC have been confidentially settled.
• Preservation Wellness Technologies, LLC v. NextGen Healthcare Information Systems, LLC (E.D. Tex., 2:15-cv-01562) – U.S. Federal Circuit Judge William Bryson presided over the case, granting Mintz client NextGen’s motion to dismiss after oral argument. Judge Bryson held that Preservation Wellness’ patent at issue covers nothing more than the basic concept of a medical records system, which he said is not patent-eligible under the U.S. Supreme Court’s Alice decision. Mintz represented NextGen on the appeal at the CAFC and the decision was upheld.
• Vtrax Technologies Licensing, Inc. v. Siemens Communications, Inc., et al (S.D. Fla.- 9:10-cv-80369) – Successfully defended our client, the US division of a Germany-based global manufacturing concern, an insurance carrier and a large national bank, in a patent infringement action relating to unified communications and related technologies. Case filed in March 2010 against various enterprise systems, obtained dismissal of case for our clients in June 2011.

Michael has been recognized by Patexia as a top attorney handling Inter Partes Reviews at the Patent Trial and Appeal Board. More information on this recognition can be viewed here.

• Represented Constellation Designs as counsel in multiple proceedings adverse to LG Electronics before the PTAB over patents related to the emerging ATSC 3.0 (NextGen TV) standard for television broadcasts, which resulted in denial of inter partes review in the majority of cases.
• 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.
• 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.
• 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.
• Represented Elm 3DS Innovations in a series of 14 IPRs filed by leading technology companies, including SK Hynix, Micron, and Samsung. Mintz was hired as replacement counsel following institution of the IPRs which had been filed in late 2015 and early 2016. Final written decisions in 13 of the proceedings confirmed validity of all but two challenged claims. PTAB's determination was upheld on appeal to the Federal Circuit.
• 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.
• Successfully represented Innovative Foundry Technologies in defending four of its semiconductor patents against IPR petitions filed by SMIC Americas. PTAB denied two of the petitions and then terminated the other two petitions in light of subsequent settlement.

• New England Biolabs, et al. v. Enzymatics, Inc. (D. Mass., 1:12-cv-12125) – Defended Enzymatics against claims of trade secrets theft and patent infringement brought by three plaintiffs in a case involving nucleic acid ligands. Resulted in favorable settlement for our client.
• L3 Communications Security and Detection Systems, Inc. v. Reveal Imaging Technologies, Inc., 1:04-cv-11884 (D. Mass) – Represented Reveal, a start- up technology company in parallel trade secret and patent infringement cases concerning methods and apparatus for scanning explosives in baggage. Following extensive discovery and summary judgment hearings in the proceedings, the cases settled favorably to Reveal.