Michael is recognized as one of the World’s Leading IP Strategists by Intellectual Asset Magazine, appearing in its 2021 inaugural and 2022 edition of the Strategy 300 Global Leaders guide, and repeatedly in its annual IAM Strategy 300 and IAM Patent 1000 publications. He is annually included in leading attorney lists produced by Managing Intellectual Property and Chambers USA, and in 2021 and 2022 was a finalist for MIP’s Patent Litigator of the Year in Massachusetts.
Michael is driven to help his clients attain their business objectives, and all of his advice is structured around clients’ overall business goals, intersecting those with strategic recommendations for the development, expansion, and protection of their IP assets. He and his team enforce patent and trade secret rights, defend against claims of patent infringement and trade secret theft, and drive high-value patent transactions. His cutting-edge work on SEP valuation and enforcement is supported by his unmatched ability to identify untapped assets and value drivers.
Enforcement & Licensing
Michael is an experienced litigator and the central tactician in developing and implementing multinational enforcement, licensing, and litigation strategies. He and his teams help clients realize significant value by identifying patent assets that can be enforced to protect clients’ competitive positions and generate licensing revenue. Such enforcement and licensing efforts today require an attorney like Michael who can manage parallel litigations in U.S. Federal District Courts, in front of the International Trade Commission (ITC), and in global jurisdictions including China, Europe, and the UK. Recent successful Mintz-coordinated global efforts have involved regional IP courts in Shanghai, China, Brazil, and in Dusseldorf and Mannheim, Germany, in addition to multiple U.S. venues. As part of the strategic use of litigation in these matters, Michael and the Mintz team have been highly successful in defending against inter partes review (IPR) petitions filed by accused infringers attempting to invalidate clients’ patents.
Michael represents clients accused of infringement, and his success in these matters is informed by his full understanding of how plaintiff cases are developed and, in turn, how to strategically approach them. His team develops defense strategies that align with clients’ goals for each matter, whether to get out quickly or fight hard to establish a reputation as a difficult defendant. The team has successfully used Alice motions to defuse efforts by serial plaintiffs to attack clients’ innovative positions in the marketplace, often eliminating threats early to limit clients’ financial risk.
Michael also advises clients on patent portfolio assessment, conducts IP due diligence in connection with transactions, and leads negotiations in the purchase, sale, and license of patent assets. Michael counsels private equity firms and venture capital funds on the quality and value of IP assets in which they are considering investing. He also uses his decades of experience in patent valuation to help clients identify patents of value in their portfolio and helps position them for a successful sale or negotiated licensing transactions, and represents clients seeking to strengthen their own portfolios through the acquisition of additional assets. Michael’s leadership on such strategic transactions has netted clients significant revenue and strengthened their competitive positions in the marketplace.
He handles complex trade secret matters involving clients’ crown jewel innovations, emphasizing the protection of those rights in the context of failed contractual agreements. Michael recognizes the critical importance of trade secrets to many clients’ overall IP strategies and helps to preserve trade secrets rights through counseling, negotiated transactions, and litigation. He represents U.S. and non-U.S. companies on both sides of trade secrets disputes, with particular expertise in representing innovative companies involved in joint development agreements and other collaborative contractual arrangements with global entities. His technical expertise and industry knowledge, successes in Federal district courts, the Court of Appeals for the Federal Circuit (CAFC), and at the ITC, and strategic business insights make him particularly well-suited to navigating the multifaceted issues that are often central to trade secret actions.
IP Division Leadership
As firmwide Chair of the Intellectual Property Division, Michael leads an international team of IP prosecutors, litigators, and transaction specialists who are focused on delivering exceptional results for clients in IPRs, the (ITC), district court defense, trade secrets, SEP/FRAND, life sciences patent litigation and artificial intelligence, arbitration, buy and sell-side IP transactions, and cryptocurrency and blockchain. Michael brings together broad industry knowledge and a keen eye for trend-spotting, to make servicing clients across key industry verticals a main point of focus for the Division.
According to a client interviewed by IAM Patent 1000 editors, “Mike is extremely good at developing cases, budgeting appropriately and assessing the scope and shape of the risk confronting his clients. Plenty of lawyers have the technical ability to handle complex patent matters, but Mike has a special understanding of and sensitivity to business issues that sets him apart.”
- University of Connecticut (JD)
- Duke University (BS, Mechanical Engineering)
International Trade Commission
- Certain Flocked Swabs, Products Containing Flocked Swabs, And Methods of Using Same (337-TA-1279) - Representing Copan Italia and Copan Industries as complainants in the ITC, asserting patent infringement claims against global competitors in a case involving the use of flocking technology (common in the textile industry) in the production of biological specimen collection swabs.
- 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 has moved to participate as an Intervenor. In a prior Investigation asserting one of the patents asserted in 337-TA-1297, Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (337-TA-1222), Michael represented DivX in a case 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 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 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 in May 2019, the Administrative Law Judge issued an Initial Determination finding that Jennewein had infringed claims of Glycosyn’s patent and recommended that a limited exclusion order issue, including a certification provision with heightened requirement.
- 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.
- Certain Consumer Electronics with Display and Processing Capabilities (337-TA-884) - Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC. Investigation was instituted in June 2013 and among the respondent entities were Panasonic, Toshiba, Vizio, and ZTE. Most respondents settled. After an evidentiary hearing held over several days in May 2014, on August 29, 2014 Mintz successfully obtained a recommendation for a Limited Exclusion Order against the remaining respondent, which chose to settle while Commission review of the ALJ’s Initial Determination was pending.
- Certain Consumer Electronics and Display Devices and Products Containing Same (337-TA-836) - Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC, and as plaintiff in multiple parallel District of Delaware cases. Cases were filed between late 2011 and early 2012, and all were resolved by the end of January 2013. The technology at issue relates to LCD panels, central processor units, graphics processing units, and other microprocessor technology. Successfully licensed all respondents, including some of the largest and most recognized names in the converged device space – Apple, LG, Research in Motion, Samsung, and Sony.
- Certain LED Photographic Lighting Devices and Components Thereof (337-TA-804) – Represented the complainant (plaintiff) that makes LED lighting systems for use in film and TV production, at the International Trade Commission. The ITC handed down its Final Initial Determination of infringement on September 7, 2012. On January 17, 2013, the ITC issued a General Exclusion Order (GEO) against respondents based in both China and the United States. The result in this case is particularly notable because it is rare for the ITC to issue a GEO due to the rigorous criteria and careful balancing of interests that apply to requests for GEOs.
- Certain Electronic Imaging Devices (337-TA-726) - Represented complainant in this three-patent ITC case. Filed in June 2010 against converged device manufacturers and focused on digital camera technology found in cell phones, laptop computers, and personal digital assistants, the matter was fully settled in April 2011. The result was successful licensing programs with three out of four respondents, among which are recognized leaders in the electronics device manufacturing space – HTC, LG, Research in Motion, and more.
- Certain Portable Communication Devices (337-TA-827) - Represented complainant in the ITC and as plaintiff in multiple parallel District of Delaware cases. Successfully licensed all respondents, including some of the largest and most recognized names in the converged device space – Amazon, LG, Motorola, Pantech Wireless, Research in Motion, Sony, and more. Cases were filed in December 2011 and settled in May 2012.
Federal Circuit Appeals
- 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.
- 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.
Federal District Court
- Preservation Wellness Technologies, LLC v. NextGen Healthcare Information Systems, LLC, 2:15-cv-01562 (E.D. Tex) – U.S. Federal Circuit Judge William Bryson presided over the case, granting Mintz client NextGen’s motion to dismiss after oral argument in April 2017. 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.
- Copan Italia SpA et al v. Puritan Medical Products Company LLC et al, 1:18-cv-00218 (D. Me) - Representing Copan Italia in asserting patent infringement and unfair competition claims against our client’s largest competitor, in a case involving the use of flocking technology (common in the textile industry) in the production of swabs to be used for the collection of biological specimen.
- Solta Medical, Inc. v. Lumenis, Inc. et al DMA-1-19-cv-11600 - Representing Defendants Lumenis, Inc. and Lumenis, Ltd. in the U.S. District Court for the District of Massachusetts against a complaint for patent infringement filed by Plaintiff Solta Medical, Inc. Solta asserted that Lumenis infringed on U.S. Patent Nos. RE42,594 and RE43,881. Lumenis is a global leader in the field of energy-based healthcare. It is active in aesthetic medicine, surgical instruments and ophthalmology instruments and related technologies. Many of its products are tested, reviewed and are the subject of numerous clinical trials and clinical research. Solta Medical, Inc. is also a player in the aesthetics industry. The case is currently set for trial in September 2022.
- 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.
- Vtrax Technologies Licensing, Inc. v. Siemens Communications, Inc., et al (S.D. Fl.- 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.
Inter Partes Reviews
- 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. (IPR2021-327, -328, -370, -495, -496, -497, -498, -547)
- 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. IPR2019-00726
- Successfully Challenged Validity - E-commerce platforms - 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. IPR2018-01011, IPR2018-01012, IPR2018-01014
- Successful Defense of 12 IPRs – Three dimensional structure memory - Mintz represented Elm 3DS Innovations in a series of 14 IPRs filed by leading technology companies, including SK Hynix, Micron, and Samsung. We were 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 were received in June and August 2017 and confirmed validity of all but two challenged claims. PTAB's determination was upheld on appeal to the Federal Circuit.
- Defense of Multiple IPRs – Point-to-Point Communication Over Computer Networks – Currently representing Straight Path IP Group in the defense of seventeen IPRs filed against three U.S. patents concerning technology for facilitating point-to-point communications over computer networks. Petitioners include Samsung Electronics Co., Ltd.; Cisco Systems, Inc.; Avaya Inc.; LG Electronics, Inc.; Toshiba Corp.; VIZIO, Inc.; Verizon Communications, Inc.; and Hulu, LLC.
- 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.
Trade Secrets Litigation
- New England Biolabs, et al. v. Enzymatics, Inc., 1:12-cv-12125 (D.Mass) – 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.
Recognition & Awards
- Recognized in Chambers USA: Nationwide – International Trade: Intellectual Property (Section 337) (2022), and in Chambers USA: Massachusetts - Intellectual Property (2015 - 2017, 2021 & 2022)
- Included by Intellectual Asset Management in its 2021 and 2022 editions of the Strategy 300 Global Leaders guide in 2021 and in IAM Global Leaders 2022.
- Selected for the 2015 – 2021 editions of IAM Strategy 300 – The World's Leading IP Strategists
- Named a finalist for Managing Intellectual Property's "Practitioner of the Year (Litigation) - Massachusetts" award (2021) and identified as a "Patent Star - Patent Contentious - Massachusetts" (2018 – 2021)
- Identified in the IAM Patent 1000, a listing of the “World’s Leading Patent Practitioners,” as a “go-to attorney for technology patent litigation" (2015 – 2022), and as as a transactions strategist in 2022.
- Recognized among the most active International Trade Commission Section 337 practitioners (2021) and Inter Partes Review practitioners (2018 - 2020) by Patexia in its annual surveys
- Included on the Massachusetts Super Lawyers – Intellectual Property Litigation list (2007, 2011 - 2021)
- Recognized by The Legal 500 United States for Intellectual Property: Patent Litigation - International Trade Commission (2017 - 2018, 2021)
- Included on the Super Lawyers Top 100 Attorneys in Massachusetts list (2016)
- Recognized in Best Lawyers in America: Patent Law (2023)
- International Trade Commission Trial Lawyers Association
- Member, Intellectual Property Owners Association, Standards Setting Committee
News & Press
Impact of Recent SEP Decisions in the UK, Germany, US and China
Determining Global FRAND Royalty Rates
ITC, Injunctions & Anti-Suit Injunctions
Evolution of Global Monetization Strategies
The key cases and decisions identified.
Anti-suit injunctions – temporary phenomena or a permanent part of the landscape?
Will the policy makers get involved?
July 13, 2022 | Blog | By Michael Renaud, Brad M Scheller, Robert Sweeney
July 6, 2022 | Blog | By Daniel Weinger, Michael Renaud, Bruce Sokler, James Thomson
May 16, 2022 | Blog | By Jonathan Engler, Michael Renaud
May 12, 2022 | Blog | By Jonathan Engler, Michael Renaud
May 9, 2022 | Blog | By Jonathan Engler, Michael Renaud
April 28, 2022 | | By Jonathan Engler, Michael Renaud
No Harm, No Foul, and No Standing for Would-be SEP Implementer: 5th Circuit Changes Narrative on Patent “Hold Up”
March 3, 2022 | Blog | By Daniel Weinger, Michael Renaud, Bruce Sokler, James Thomson
March 1, 2022 | Blog | By William Meunier, Michael Renaud, Brad M Scheller
News & Press
May 16, 2022
January 4, 2022
December 22, 2021
December 22, 2021
December 15, 2021
November 3, 2021
September 21, 2021
September 20, 2021
September 16, 2021
September 15, 2021
September 13, 2021
July 30, 2021
January 5, 2021
December 22, 2020
December 17, 2020
A Critique of Glory Days and How Reports of Anticompetitive Risks of Pools Have Been Greatly Exaggerated
November 4, 2020
October 15, 2020
September 24, 2020
August 10, 2020
July 16, 2020
July 10, 2020
Joint Policy Statement and Recent Cases Confirm That Injunctive Relief on SEPs is Available at the ITC
March 19, 2020
January 10, 2020
October 30, 2019
October 22, 2019
The article noted that the Mintz team representing Netlist includes Member and Chair of the Intellectual Property Division Michael Renaud, along with Members James Wodarski, Drew DeVoogd, Steve Akerley, Aarti Shah, and Associates Kristina Cary, Matthew Galica, and Tiffany Knapp.
October 4, 2019
September 18, 2019
The Mintz team representing Glycosyn at the ITC includes Michael Newman, Thomas Wintner, Michael Renaud and James Wodarski; and the Mintz team representing Glycosyn at the PTAB includes Michael Newman, Thomas Wintner, Peter Cuomo and Daniel Weinger.
In a precedential opinion, the Federal Circuit affirmed decisions upholding the validity of nearly a dozen Elm patents on semiconductor technologies that accused infringers challenged at the Patent Trial and Appeal Board.
The Mintz team representing Elm includes Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Members William Meunier, James Wodarski and Michael Newman, Special Counsel Sandra Badin, and Associates Kevin Amendt and Matthew Galica.