Inter Partes Reviews

• Koninklijke Philips N.V. and Philips North America LLC, IPR2021-327, -328, -370, -495, -496, -497, -498, -547 - Currently representing 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.
• Interdigital VC Holdings, IPR2021-00102 – Currently representing Interdigital to defend one of its video encoding and decoding patents against an IPR petitions filed by Unified Patents LLC.
• GE Video Compression LLC, IPR2019-00726 – Successfully represented GE Video Compression in defending its HEVC standard essential patent against an IPR Petition filed by Unified Patents. Inc. PTAB denied institution of the petition.
• Shopify Inc., IPR2018-01011, -01012, -01014 - 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.
• Infobridge PTE Ltd., IPR2017-00099, -100 – Successfully represented Infobridge in both the PTAB and the Court of Appeals of the Federal Circuit against two IPR Petitions and appeals by Samsung Electronics Co., Ltd, resulting in a remand in which the PTAB recently issued final written decisions upholding the validity of Infobridge’s challenged claims.
• Elm 3DS Innovations LLC, IPR2016-00386, -387, -388, -390, -391, -393, -394, -395, -687, -691, -708, -770, -786 – Successfully represented Elm 3DS in a series of 14 IPRs filed by leading technology companies, including SK Hynix, Micron, and Samsung. After taking over the defense after PTAB instituted each IPR, Bill and Mintz convinced PTAB to reverse its initial positions, ultimately saving 105 of 107 challenged claims across 11 different Elm 3DS integrated circuit patents. Bill and Mintz also represented Elm 3DS in the thirteen subsequent appeals, where they likewise convinced the Federal Circuit to uphold each of the PTAB's determinations of patentability.
• ParkerVision Inc., IPR2015-01828, -1829, -1831, -1832, -1833, -1834 – Successfully represented ParkerVision in a series of 6 IPRs filed by Qualcomm against ParkerVision’s U.S. Patent No. 6,091,940 concerning an innovative system for frequency conversion. After taking over the defense after PTAB instituted each IPR, Bill and Mintz convinced PTAB to reverse its initial positions, ultimately winning 4 of the 6 instituted IPRs and saving a significant number of the challenged claims. Bill and Mintz also represented ParkerVision in the subsequent appeals, where they likewise convinced the Federal Circuit to uphold each of the PTAB's determinations of patentability.
• Straight Path IP Group, IPR2014-01366, -1367, -1368, IPR2015-00196, -198, -209, -1006, -1007, -1011, -1014, -1015, -1017, -1397, -1398, -1400, -1406, -1407 – Successfully represented Straight Path in the defense of 17 IPRs filed against three U.S. patents concerning technology for facilitating point-to-point communications over computer networks. Petitioners included Samsung Electronics Co., Ltd.; Cisco Systems, Inc.; Avaya Inc.; LG Electronics, Inc.; Toshiba Corp.; VIZIO, Inc.; Verizon Communications, Inc.; and Hulu, LLC. Bill and Mintz prevailed on all challenged claims and then convinced the Federal Circuit to uphold each of the PTAB's determinations of patentability.
• Innovative Foundry Technologies, IPR2020-00786, -837, -839, -1003 (PTAB) - 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.

Federal District Court

• 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.
• Alexander Orenshteyn v. Citrix (SD Fla - 0:02cv60478) – Won summary judgment of noninfringement and invalidity of patents asserted against a leading remote access provider. Also successfully defended these judgments on appeal to the Federal Circuit and convinced the District Court to enter sanctions against the patent owner and its counsel.
• NMT Medical, Inc. et al v. Cardia, Inc. (CAFC, D Minn. - 0:04cv4200) – Convinced the Federal Circuit Court of Appeals to reverse and remand a finding of no infringement against Cardia, a leading medical technology company. Bill then won summary judgment that the defendant’s septal occluder medical device infringed his client’s patent concerning the treatment of heart defect.
• Akeva LLC v. Adidas-Salomon AG, et al (ND NC – 1:03cv1207, CAFC) – Won summary judgment of noninfringement in favor of a worldwide athletic equipment company and then successfully defended that judgment on appeal to the Federal Circuit.
• Ihance, Inc. v. Eloqua Limited, et al (ED VA – 2:11cv257) – Convinced District Court to dismiss one of two asserted patents against defendant, a marketing automation SaaS company. This dismissal was quickly followed by a settlement of all remaining claims.
• IPS Group, Inc., v, Civic Smart, Inc., Duncan Solutions, Inc., and Duncan Parking Technologies, Inc., 17-cv-00632 (SDCA) – Successfully represented the defendants in the District Court for the Southern District of California. Bill and Mintz convinced the Court to dismiss the plaintiff's Lanham Act and unfair trade practices claims. The remaining patent claims settled very favorably after claim construction ruling from Court in defendants’ favor.
• Accolade Systems LLC v. Citrix Systems, Inc., et al (ED TX – 6:07cv48) – Won summary judgment of patent noninfringement in favor of defendant, a remote access and collaboration SaaS company, after the other accused infringers had settled with the plaintiff.

International Trade Commission

• Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (337-TA-1222) – Represented DivX, a video codec company headquartered in San Diego, in enforcing patents before the ITC in the District of Delaware. The asserted patents involve innovations relating to digital rights management and streaming media. LG and Samsung settled after the Markman order was issued, leaving TCL as the sole remaining respondent. Shortly after the seven day evidentiary hearing held in July 2021, one of the two principal suppliers of the accused streaming technology to TCL, namely Roku, stepped in and took a license to DivX’s portfolio, thus partially resolving DivX’s claims against TCL. Prior to the court issuing a decision on the merits, DivX and TCL entered into a bilateral settlement agreement resolving DivX’s remaining claims against TCl and bringing an end to all pending litigation.
• 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.
• 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.
• 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.

Federal Circuit Appeals

• 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.
• 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 thirteen inter partes reviews. PTAB held that petitioners did not establish the unpatentability of 105 claims across eleven patents, and the Federal Circuit affirmed the PTAB’s decisions.
• Qualcomm v. ParkerVision, 2017-2012, 2017-2013, 2017-2014, 2017-2074 (Fed. Cir.) – Successfully represented ParkerVision in defending appeal of highly favorable final written decisions enterd by the Patent Trial and Appeal Board in four inter partes reviews challenging ParkerVision’s 6,091,940 patent, titled "Method and system for frequency up-conversion." Federal Circuit affirmed PTAB decisions upholding patentability of ParkerVision claims.
• 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 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. On remand, PTAB found all of the challenged claims patentable.