- Intellectual Property
- IP Litigation
- Valuation & Assessment
- Intellectual Property & Technology Litigation
- Post-Grant Proceedings
|Contact Info||Telephone: 617.348.1870|
Internet: Each Attorney's Internet Address takes the following form: first initial, last name @mintz.com (e.g., firstname.lastname@example.org)
|University ||Duke University, BS, Mechanical Engineering|
|Law School||University of Connecticut, JD|
|Admitted||1996, Massachusetts; Connecticut; United States Patent and Trademark Office|
Michael is Division Head for the Intellectual Property Section at Mintz Levin and serves as a member on the firm's Policy Committee. He is an experienced litigator known for his business approach to creating value in patent assets. His success on behalf of clients comes from his ability to identify the value drivers in a portfolio and communicate that value to competitors, investors, purchasers, licensees, counsel, judges, and juries.
With a background in mechanical engineering and nearly 20 years' experience practicing law, he has the combination of technical and legal skills essential to a strategic patent practice. He has achieved courtroom victories and negotiated favorable settlements on behalf of both patent owners and accused infringers in complex negotiations and protracted litigation.
Michael develops strategies for and guides clients through monetization programs for complex technology portfolios. Several recent monetization programs have each returned tens of millions of dollars through litigation, licensing and sale activities.
Michael also advises clients on patent portfolio assessment and conducts IP due diligence in connection with transactions. He counsels private equity firms and venture capital funds on IP assets and patent value. He also helps patent owners develop and implement strategies for identifying and leveraging untapped assets in their patent portfolios.
He has particularly deep expertise litigating Section 337 matters before the International Trade Commission (ITC) and has also achieved significant success in Federal District Courts, including the Eastern District of Texas, District of Delaware, Northern District of California, District of Massachusetts, and numerous others.
Michael's technology experience includes electromechanical systems, digital cameras, embedded microprocessors, telecommunications and network software, cellular phones, and e-commerce, among others.
Michael rejoined Mintz Levin from Pepper Hamilton LLP in 2012.
•Mintz Levin Further Expands IP Practice with Addition of a Group of Life Sciences Attorneys, (02.03.2015)
•Mintz Levin Further Expands IP Practice with Eighteen Attorneys, (01.09.2015)
•Eighty-Five Mintz Levin Attorneys Named 2014 Massachusetts Super Lawyers and Rising Stars, (10.17.2014)
•Mintz Levin Helps Client Achieve Significant ITC Patent Victory, (09.04.2014)
•Quoted in Toshiba Loses Digital Display IP Fight before ITC, Law360 (09.03.2014)
•Mintz Levin Further Expands IP Practice with Addition of Terri Shieh-Newton in San Francisco, (04.28.2014)
•Seventy-Nine Mintz Levin Attorneys Named 2013 Massachusetts Super Lawyers and Rising Stars, (10.21.2013)
•Featured in Q&A with Mike Renaud, Law360 (05.01.2013)
•Featured in Mintz Levin Boosts Patent Practice with Pepper Hamilton Trio, Law360 (07.26.2012)
•Mintz Levin Expands International IP Litigation Practice, (07.25.2012)
Awards & Recognitions
•Identified in the IAM Patent 1000 2014, a listing of the “World's Leading Patent Practitioners,” as a “go-to attorney for technology patent litigation”
•Massachusetts Super Lawyers - Intellectual Property Litigation (2007, 2011 - 2014)
•Co-author, IEEE Clarifies RAND Commitment for Standard-Essential Patents, Intellectual Property Advisory (02.13.2015)
•Carnegie Mellon University v. Marvell: $1.5 Billion at Stake at the Federal Circuit, Intellectual Property Advisory (01.13.2015)
•Co-author, Patentability of Software Post-Alice: How Do Courts Determine Whether an Idea is Abstract?, Intellectual Property Advisory (01.12.2015)
•Co-author, Patent Hold-Up or Patent Hold-Out? Judge Essex Adds His Voice to the SEP-FRAND Debate, Intellectual Property Alert (07.10.2014)
•Co-author, Computer Implementation Not Enough to Render Abstract Ideas Patent Eligible, Intellectual Property Alert (06.20.2014)
•Co-author, International Trade Commission Takes Steps to Promote Early Adjudication of Dispositive Issues, Intellectual Property Alert (07.03.2013)
•Moderator, Monetization Models, IP Business Congress - The Annual Event for Global IP Leaders, Amsterdam (07.24.2014)
•Speaker, Key Strategies for Maximizing Value in Your Company's Software IP, Best Practices in Intellectual Property 2014, Tel Aviv, Israel (05.28.2014)
•Panelist, Determining the Value of Your Patents: Has It Become Science?, Best Practices in Intellectual Property 2014, Tel Aviv, Israel (05.27.2014)
|Reported Cases||Representative Matters: International Trade Commission; Certain Consumer Electronics with Display and Processing Capabilities (337-TA-884) Represent investors in the patent portfolio of the former Silicon Graphics as complainant in the International Trade Commission. Investigation was instituted in June 2013 and among the respondent entities are Panasonic, Toshiba, Vizio, and ZTE. Most respondents settled. The ITC hearing was held over several days in May 2014, and on August 29, Mintz Levin successfully obtained a recommendation for a Limited Exclusion Order against the remaining respondent. Commission review of the Administrative Law Judge's ruling remains pending. Certain Consumer Electronics and Display Devices and Products Containing Same (337-TA-836) Represented investors in the patent portfolio of the former Silicon Graphics 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 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. Certain LED Photographic Lighting Devices and Components Thereof (337-TA-804) Represented California-based complainant (plaintiff) and its UK parent, companies that make 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 (defendants) 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. It is much more common for complainants to seek and receive a Limited Exclusion Order from the court 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 Electronic Devices, including Handheld, Wireless Communications Devices (337-TA-667) Represented complainant in three-patent ITC case and in parallel Federal District Court cases. Filed in December 2008, the cases were settled as to all respondents by May 2010 and resulted in successful licensing agreements with each, including some of the largest and most recognized names in the converged device space - HTC, Panasonic, Research in Motion, and more.|
Documents by this lawyer on Martindale.com
Patent Hold-Up or Patent Hold-Out? Judge Essex Adds His Voice to the SEP-FRAND Debate
Sandra J. Badin,Michael T. Renaud,James Wodarski, July 18, 2014
Administrative Law Judge Essex recently issued the public version of his Initial Determination in ITC investigation No. 337-TA-868, ruling that the respondents are precluded from relying on the defense that the patent holder is required to license the patents-in-suit on fair, reasonable and...
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