Patent Litigation

• Truveris, Inc. v. SkySail Concepts, LLC, NDOH-1-21-cv-01262 – Defended SkySail against allegations of patent infringement of a computer system that manages the selection of prescription drug plans.  The District Court granted SkySail’s motion to dismiss for lack of patentable subject matter under 35 U.S.C. § 101.  The District Court granted the motion because the asserted claims of plaintiff’s prescription drug plan selection management patent encompassed unpatentable subject matter and found that that the claims were directed toward an abstract idea.
• Truveris, Inc. v. SkySail Concepts, LLC (Fed. Cir. 23-1024) - Represented SkySail Rx as Defendant-Appellee in an appellate case adverse to Truveris related to a patent for a computer system that manages the selection of prescription drug plans. The Federal Circuit issued a per curiam summary affirmance of the District Court’s order granting SkySail’s motion to dismiss the case.
• 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 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.
• Advanced Aerodynamics, LLC v. Spin Master, Ltd., 6:21-cv-00002 (W.D. Tex) - Represented Defendant Spin Master in a patent infringement action in the Western District of Texas, alleging that certain Spin Master Air Hogs toys infringed Plaintiff’s patents.  After more than a year of litigation, including a Markman hearing and several key rulings in favor of Spin Master, Plaintiff abandoned its case against Spin Master and voluntarily dismissed of all its claims with prejudice.
• 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. 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 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.
• Innovative Foundry Technologies LLC v. Semiconductor Manufacturing International Corporation, et al., 6:19-cv-00719 (W.D. Tex) - Represented Plaintiff in enforcing 4 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.
• 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.

Life Sciences Disputes

• Represented a Fortune 500 biotechnology company in an arbitration brought against it by a Fortune 100 pharmaceutical company to gain control over the right to commercialize a novel, billion-dollar multiple sclerosis drug. Following a multi-week hearing, the arbitrator ruled in favor of the client on all claims.
• Represented a privately owned pharmaceutical company in an arbitration against a Fortune 100 pharmaceutical company over the parties’ joint development of a novel therapy for the treatment of Hepatitis C, and the successful settlement of the client’s right to a milestone payment as a result of such development.
• Represented a publicly owned in vitro diagnostic manufacturer in the successful settlement of an arbitration involving claims that the client’s licensee and exclusive distributor had failed to develop and commercialize the manufacturer’s MicroRNA-based products in the oncology market.
• Advised a publicly owned pharmaceutical company on legal strategies and risks associated with the company’s plans for developing novel treatments for oncology and inflammatory indications.
• Advised a privately owned pharmaceutical company with respect to several disputes with its collaboration partner, a Fortune 100 pharmaceutical company, over milestone payments and the development of novel therapies for the treatment of drug resistant infections.
• Represented a publicly owned in vitro diagnostic company in the defense and successful settlement of a lawsuit brought against it by a quasi-governmental Dutch entity alleging breach of several collaboration, licensing and research agreements.
• Advised a publicly owned biotechnology company in the successful resolution of a dispute with its collaboration partner over the development of cardiac-related therapies, as well as the successful termination of the parties’ collaboration agreement.
• Advised a privately owned European diagnostics company in the successful resolution of a dispute with a Fortune 100 pharmaceutical company over royalty payments related to the parties’ jointly-developed diagnostic product.
• Represented a privately owned in vitro diagnostic manufacturer and its publicly owned parent in the successful settlement of lawsuit brought against it by one of the world’s largest pharmaceutical companies over the right to distribute a companion diagnostic kit for use in the oncology market.
• Represented the Eastman Kodak Company in the complete dismissal of a lawsuit filed against it by the United States and a qui tam relator asserting violations of the federal False Claims Act and Anti-Kickback Act.
• Represented one of the nation’s largest pharmacies in the successful settlement (without prosecution or litigation) of allegations by the Commonwealth of Massachusetts that the client’s pricing practices for a brand name drug and its generic version violated the state’s False Claims Act.

Other Complex Commercial Disputes

• Represented privately owned IT company in the defense and successful settlement of a lawsuit brought by former shareholder alleging fraud and breach of a stock repurchase agreement.
• Represented Taiwanese creditor in complex civil RICO case in California federal court involving claims against 34 foreign and domestic defendants. The firm achieved a successful settlement of the case at the commencement of trial.
• Represented the Commonwealth of Massachusetts in the investigation, negotiation and ultimate settlement of numerous disputes between the Commonwealth and the IT contractor that built its on-line healthcare exchange pursuant to the Affordable Care Act.
• Represented the State of Vermont in the investigation, negotiation and ultimate settlement of numerous disputes between Vermont and the IT contractor that built its on-line healthcare exchange pursuant to the Affordable Care Act.
• Represented a software company in the successful settlement of a lawsuit that it filed against a former customer for breach of the software company’s license and services agreements.
• Represented a large retail water and wastewater utility against claims brought against it by a software provider for alleged breaches of the utility’s software license agreement. The software provider ultimately decided not to pursue any of its claims.
• Represented a wastewater treatment company in the successful settlements of several disputes with its brewery clients over the parties’ long-term water treatment agreements.
• Represented a hybrid vehicle company in the successful settlement of a dispute concerning the company’s Series D round financing.
• Represented an Arizona county in the successful resolution of a dispute with a waste hauling company over the parties’ rights under a long-term hauling and disposal agreement with California municipal landfill.
• Represented a large, privately owned vehicle rental company and several real estate investment entities in the defense and successful settlement of a federal ERISA suit (and a related arbitration) brought against them by the New England Teamsters pension fund.
• Represented a privately owned New York real estate development company in the prosecution and successful settlement of an arbitration against a South Carolina real estate development company over an agreement governing the client’s first-of-its-kind development of LEED certified homes.
• Represented a privately owned Massachusetts real estate company in a multi-year arbitration against a Fortune 500 waste disposal company concerning the parties’ rights under a long-term solid waste disposal agreement.
• Represented a privately owned solar project development company in the successful settlement of a dispute over a solar power purchase agreement.
• Represented a privately owned LNG supply company in the successful settlement of a dispute over the alleged breach of a nation-wide carrier agreement.
• Represented a privately owned LNG supply company in the successful settlement of an arbitration concerning the alleged breach of a long-term LNG supply agreement.