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Michael T. Renaud

Member / Chair, Intellectual Property Division

MTRenaud@mintz.com

+1.617.348.1870

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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.

Infringement Defense

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.

Transactions

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.

Trade Secrets

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.”

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.

Experience

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.
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viewpoints

Rule 11 Sanctions Appropriate for Frivolous Inventorship Pleading

July 13, 2022 | Blog | By Michael Renaud, Brad M Scheller, Robert Sweeney

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5th Circuit Confirms Avanci SEP Pool is Safe: No Antitrust Issue with Avanci’s Pool

July 6, 2022 | Blog | By Daniel Weinger, Michael Renaud, Bruce Sokler, James Thomson

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DOJ Breaking with Big Tech Approach to SEPs

June 13, 2022 | Blog | By Daniel Weinger, Michael McNamara, Michael Renaud, James Thomson

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Rules for Complainant Success in ITC Trade Secret Litigation

May 16, 2022 | Blog | By Jonathan Engler, Michael Renaud

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The ITC Should Put Its Foot Down on Patent Hold-out and Hold-up

May 9, 2022 | Blog | By Jonathan Engler, Michael Renaud

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ITC Must Enforce Standard-Essential Patents At The Border

April 28, 2022 | | By Jonathan Engler, Michael Renaud

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Avoiding Unforced Tech DI Errors at the ITC

March 11, 2022 | Blog | By Jonathan Engler, Michael Renaud

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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

In its analysis of Cont’l Auto. Sys., Inc. v. Avanci, L.L.C.,, the Fifth Circuit made several interesting findings: (1) that potential pass-through non-FRAND royalties are too speculative to create an injury in fact; (2) that SEP holders can fulfill their obligations to SSOs, with respect to suppliers, by actively licensing SEPs to downstream OEMs; and (3) that not all implementers are intended beneficiaries entitled to FRAND licenses.
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Patent Owner Tips for Avoiding IPR Institution

March 1, 2022 | Blog | By William Meunier, Michael Renaud, Brad M Scheller

Inter partes reviews have a very high institution rate. And worse, once instituted IPRs result in invalidated claims at an inordinately high rate. The best defense against an IPR petition is to convince the Patent Trial and Appeal Board to deny institution. In this post, the Mintz IPR team put together out top six tips for avoiding IPR institution.
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News & Press

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Mintz continues its ongoing commitment to ensuring the firm is an equitable workplace, establishing a new Diversity, Equity and Inclusion (DEI) committee that reports directly to the firm's main decision making body, the Policy Committee. The new Equity Advisory Council (EAC) will be responsible for driving equity for the firm’s attorneys, especially women, attorneys of color and LGBTQ+ attorneys.
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Mintz is pleased to share that two attorneys and the firm’s Patent practice have been shortlisted in the 2022 edition of Managing Intellectual Property’s (MIP) Americas Awards. The awards recognize the “remarkable achievements and developments” of firms, individuals and companies impacting the IP sector over the past year. 
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Mintz is pleased to announce that Intellectual Asset Management (IAM) named Michael Renaud, James Wodarski and Frank Gerratana to its 2022 edition of the IAM Strategy 300 Global Leaders Guide, a supplement to the IAM Strategy 300: The World’s Leading IP Strategists. According to IAM, the guide “draws from the worlds of private practice, consulting, and other service providers, with specialists from the major IP markets in North America, Europe and Asia. Together they possess a wealth of expertise across disciplines and sectors.”
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Law360 detailing high-profile patent cases to watch in 2022. Specifically, Mr. Renaud commented on American Axle v. Neapco, a “monster” Federal Circuit decision involving patent eligibility under Section 101 of the Patent Act, which the U.S. Supreme Court is considering taking up.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted extensively in an article published by Law360 examining the potential impact for standard-essential patent (SEP) owners of the U.S. Department of Justice’s and the U.S. Patent and Trademark Office’s draft policy statement concerning licensing negotiations and remedies for SEPs subject to voluntary F/RAND commitments.
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Mintz Member and Chair of the firm’s Intellectual Property Litigation Practice Matthew Hurley, Member and Chair of the firm’s Intellectual Property Division Michael Renaud, and Associate Oliver Ennis co-authored an article published in the November/December 2021 issue of IP Litigator exploring why arbitration has become an increasingly attractive alternative for resolving IP disputes. The authors wrote that while arbitration isn’t the right fit (or even available) in all situations, IP rights holders should consider adding it to their enforcement strategies.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Managing IP examining whether the U.S. Department of Justice’s and the U.S. Patent and Trademark Office’s new standard-essential patent draft policy would speed up or stall licensing negotiations if finalized.
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Law360 featured the arrival of seasoned U.S. International Trade Commission attorney Jonathan Engler as a Member of Mintz’s Intellectual Property Practice in Washington, D.C. The article included commentary from Mr. Engler on what attracted him to Mintz and areas of focus within his practice, and also included a quote from Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud.
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Mintz Member and Chair of the Firm’s Intellectual Property Division Michael Renaud and Associate James Thomson were quoted in an article published by IPWatchdog discussing the recently released text of the “Restoring America Invents Act”, which would essentially end discretionary denial practice under precedential Patent Trial and Appeal Board (PTAB) cases and limit denial to petitions where “the same or substantially the same prior art or arguments previously were presented to the Office,” among other changes.
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Mintz Member and Chair of the Firm’s Intellectual Property Division Michael Renaud, Member Adam Rizk, and Associate Matthew Karambelas co-authored an article published by IAM on adjudicating redesigns at the International Trade Commission including best practices for complainants managing discovery of redesigns.
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Law360 reported that the U.S. Court of Appeals for the Federal Circuit recently upheld the International Trade Commission's finding that a pair of bacteria strains used by German-based Jennewein infringed a Glycosyn milk patent. The article included a quote from Mintz Intellectual Property Member Michael Newman, noting that, in addition to Mr. Newman, Glycosyn was represented by Member and Chair of the firm's Intellectual Property Division Michael Renaud, Members Thomas Wintner and James Wodarski, and Associates Courtney Herndon and Matthew Karambelas.
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Mintz Member and Chair of the Firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Managing IP on a recent judgment issued by the U.S. Court of Appeals for the Fifth Circuit in HTC v Ericsson. In the article, Mr. Renaud commented on how the ruling indicates an emerging trend of U.S. courts rejecting the Smallest Saleable Patent Practicing Unit (SSPPU) argument made in the context of a fair, reasonable, and non-discriminatory (FRAND) dispute governed under European Telecommunications Standards Institute (ETSI)’s Intellectual Property rules.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Associate Matthew Karambelas co-authored the United States chapter of the twelfth edition of International Comparative Legal Guide’s Patent Laws and Regulations 2022. The chapter examined common issues in patent laws and regulations, including patent enforcement, patent amendment, licensing, and more, and provided a look ahead at how patent law is expected to evolve in the coming year.
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Mintz Member and Chair of the Firm’s Intellectual Property Division Michael Renaud was quoted in an article published by IAM on a recent judgment issued by the U.S. Court of Appeals for the Fifth Circuit in a breach-of-fair, reasonable, and non-discriminatory (FRAND) litigation between HTC and Ericsson, and how the decision could attract standard essential patent (SEP) owners back to U.S. courts.
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Law360 reported that Mintz client American video codec company DivX, an early innovator in the digital streaming video and digital rights management scene, has reached confidential settlements with LG and Samsung, resolving international litigation claiming they infringe DivX’s streaming patents with their smart televisions. The Mintz team representing DivX is led by Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Member Adam Rizk and includes Member and Chair of the firm’s Intellectual Property Litigation Practice Matthew Hurley, Members Keith Carroll, Marguerite McConihe, Michael McNamara, Samuel Davenport, and Daniel Weinger, and Associates Matthew Karambelas, Jessica Perry, and Nana Liu.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Bloomberg Law on an upcoming trial before a U.K. court in a patent battle between Apple Inc. and Optis Cellular Technology LLC involving iPhones and other devices and its implications for global standard-essential patent disputes.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Law360 on the largest patent jury trial verdicts of 2020, specifically regarding the $1.9 billion bench trial judgment against Cisco Systems, Inc.
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In this Law360 expert analysis article, Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members James Wodarski and Daniel Weinger reflected on the biggest standard essential patent (SEP) victories of patent owners in 2020.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in Law360 on the biggest patent rulings of 2020, specifically Germany's top court's ruling in Sisvel v. Haier and Unwired Planet v. Huawei.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Members James Wodarski and Daniel Weinger, and Associate Kara Grogan co-authored an article published by IPWatchdog that critiques an article recently published in the University of San Diego Law titled “Glory Days: Do the Anticompetitive Risks of Standards-Essential Patent Pools Outweigh Their Procompetitive Benefits?,” which criticized patent pools, alleging inefficiencies and anticompetitive risks of pools for standard essential patents.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Members James Wodarski and Daniel Weinger, and Associate Kara Grogan co-authored an article published by IPWatchdog examining patent pools, an elective market mechanism designed to provide benefits to both innovators and implementers.
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In IP Watchdog, Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Member William Meunier weighed in on the U.S. Supreme Court’s decision to grant certiorari in three cases involving Arthrex, Inc. focusing on the question of whether the administrative patent judges of the Patent Trial and Appeal Board were constitutionally appointed.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Member and Co-chair of the firm’s Antitrust Practice Joseph Miller, and Member Daniel Weinger co-authored a Law360 expert analysis article that examined an updated business review letter issued by the U.S. Department of Justice (DOJ)'s Antitrust Division to the Institute of Electrical and Electronics Engineers Inc., which clarified the DOJ's views on licensing and enforcement practices related to standard essential patent (SEP)s.
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Michael Renaud, James Wodarski, and Mark Pino have been recognized in the 2020 edition of IAM Strategy 300: The World’s Leading IP Strategists.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Bloomberg Law on the Federal Circuit’s recent decision in Godo Kaisha IP Bridge I v. TCL Commc’n Tech. Holdings Ltd. and its potential impact on owners of standard essential patents
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In an article published by Law360, Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted extensively on a long-awaited decision from the German Federal Court of Justice in Sisvel v. Haier, which provided guidance on how companies are expected to act when negotiating fair, reasonable and nondiscriminatory (FRAND) licenses for standard essential patents (SEP)s.
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud was quoted in an article published by Law360 on patent cases to watch in the second half of 2020, including global disputes over licensing standard essential patents. 
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Firm Awarded 10-Year Contracts for Biotechnology and Mechanical Engineering Innovations
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members James Wodarski and Andrew DeVoogd co-authored an article published in the February 2020 issue of The Licensing Journal that examined opportunities for remedies including injunctive relief as redress against infringement for standard essential patent (SEP) owners at the U.S. International Trade Commission.
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Mintz Member and Chair of the firm's Intellectual Property Division Michael Renaud, Member James Wodarski, and Associate Matthew Galica co-authored an article published by IAM on how policy and case law might affect standard-essential patent (SEP) rights and enforcement in the 2020s. 
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Mintz Member and Chair of the firm’s Intellectual Property Division Michael T. Renaud was quoted in a recent Law360 article that examined a December 2019 joint policy statement from the U.S. Patent and Trademark Office and U.S. Department of Justice’s antitrust division stating that standard-essential patents should be treated no differently than other patents, and that companies that own them should be able to obtain injunctions.
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The October 29 edition of the Skilled in the Art newsletter published by Law.com reported that Mintz achieved a favorable Notice of Initial Determination at the U.S. International Trade Commission on behalf of the firm’s client Netlist, Inc., a California-based technology company focused on developing innovative server memory module products, including technology that is essential to certain JEDEC memory standards. Significantly, this is the first time since 2013 that a Section 337 violation has been found based on a standard-essential patent.
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Law360 reported that a U.S. International Trade Commission judge ruled that Korean manufacturer SK Hynix infringed on California-based technology company, and Mintz client, Netlist, Inc.’s standard essential patent related to server memory modules.

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.
Mintz Member and Chair of the firm’s Intellectual Property Division Michael T. Renaud was quoted in an article published by the Boston Business Journal featuring advice from top patent attorneys for innovators.
An article published by Law360 reported that following the U.S. International Trade Commission’s initial decision that Jennewein Biotechnologie GmbH’s imports infringe a Glycosyn LLC patent on human milk oligosaccharides, the Patent Trial and Appeal Board denied Jennewein’s petition for post-grant review of a related patent.

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.
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Law360 featured a Mintz patent litigation team as “Legal Lions” in its weekly list of the top verdicts for its representation of Elm 3DS Innovations, a patent licensing entity.

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.
A team of Mintz attorneys - Mike Renaud, Rob Kidwell and Rob Moore - authored this issues response op-ed discussing the Department of Justice's (DOJ) statements on intellectual property rights, "the New Madison Approach." This approach marks a return to the core principles on which the patent laws are predicated.
This column notes that with the legal landscape surrounding SEPs shifting in many countries, it has never been more important to take a global view of patent assertion – but any cross-border litigation strategy needs careful consideration. A team of Mintz intellectual property attorneys including Members Mike Renaud and Jim Wodarski and Associate Rob Moore authored this column.
Member and Chair of the Intellectual Property Division Mike Renaud provides commentary in this feature article. The piece is part of Law360’s ongoing series highlighting important patent venues. Mike and other IP leaders discuss Germany as an area of focus for IP litigation in Europe.
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This feature article includes commentary from leading intellectual property industry sources to discuss how the standard-essential patents (SEPs) landscape has changed throughout recent years. Members Mike Renaud and Jim Wodarski are quoted among the IP insiders providing insight.
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This article notes that the Patent Trial and Appeal Board (PTAB) has denied Samsung’s request to challenge a patent it has been accused of infringing – resulting in a final win in a series of victories for Mintz client, Elm 3DS Innovations.
Mintz Members and intellectual property attorneys Mike Renaud, Aarti Shah and Jim Wodarski collaborated on an article published by Financier Worldwide Magazine discussing standard-essential patents.
A team of Mintz attorneys has successfully defended 105 of 107 patent claims across 14 instituted Inter Partes Reviews in a series of decisive wins for client Elm 3DS Innovations, LLC.
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The U.S. Court of Appeals for the Federal Circuit found decisively in favor of Mint and client Straight Path IP Group, Inc. in a long-fought battle over three of the licensing firm’s patents. The court upheld a prior 2016 decision by the Patent Trial and Appeal Board.
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Mintz attorneys have saved sixty-three of sixty-five challenged patent claims across eight patents in a series of sweeping Inter Partes Review victories for their client, Elm 3DS Innovations, LLC, victories that may pave the way to Elm prevailing in other pending invalidity challenges. 
The U.S. International Trade Commission (ITC) has announced it's launching an investigation into whether thermoplastic parts used in certain BMW, Honda, and Toyota vehicle models have infringed five patents owned by Intellectual Ventures LLC.
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This Boston Business Journal feature article highlights Mintz’s intellectual property team in Boston. The piece notes that while other law firms move away from patent prosecution work, Mintz has continued to excel in that area and expand the team as well.
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Mintz IP attorneys Michael Renaud, Michael Newman, James Wodarski, and Sandra Badin are among industry sources in this article assessing a Texas ruling that "asserted claims of patent covering medical technology are invalid as abstract and not inventive" under Alice Corp v. CLS Bank International. 
Mintz announced a victory before the U.S. Court of Appeals for the Federal Circuit. The court affirmed an Eastern District of Texas ruling from May 2016 that held unpatentable a medical records patent asserted by Preservation Wellness against NextGen Healthcare.
This piece, co-authored by Mike Renaud and Sandra Badin, discusses two notable decisions by the Federal Circuit and the ITC that impact standard essential patents and shape the incentives of technology innovators.
Mintz attorneys Michael Renaud, Robert Kidwell, and Robert Moore discuss the FTC’s suit against Qualcomm in the U. S. District Court for the Northern District of California as well as the timing of the lawsuit and specifics of the FTC’s complaints against said company. 
A team of Mintz attorneys author this column discussing the Korean Fair Trade Commission’s steep fine against Qualcomm for antitrust violations and the continued antitrust concerns raised by Qualcomm’s licensing practices.
Mintz has bolstered its nationally recognized, bicoastal Intellectual Property Practice with the addition of veteran Silicon Valley attorney Stephen J. Akerley, who will serve as a Member in the San Francisco office.
Division Head of the firm’s IP Section Michael Renaud and Special Counsel Sandra Badin authored this Massachusetts Lawyers Journal column on the recent decisions to opt out of standards-setting patent policy introduced by the Institute of Electrical and Electronics Engineers’ (IEEE).
Michael T. Renaud, Division Head for Mintz's Intellectual Property Section, is speaking on a panel at the 2016 IP Dealmakers Forum. The event is taking place November 17 at the Apella Event Space at Alexandria Center in New York City.
IP Division Head Michael Renaud, Member Aarti Shah, and Associate Adam Rizk authored this Financier Worldwide article discussing the ITC's statement that it will treat standard-essential patents the same way it treats all other patents asserted in a Section 337 investigation.
IP Division Head Michael Renaud and Associate Nick Armington authored this Bloomberg BNA Daily Labor Report column examining the protections and provisions brought about by the DTSA and how employers can fully leverage it to combat trade secret theft.
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IP Division Head Michael Renaud and Associate Nick Armington authored this Bloomberg BNA Daily Labor Report column that examines the DTSA and how employers can fully leverage it to combat trade secret theft.
Fifty-three Mintz attorneys have been named Massachusetts Super Lawyers for 2016 and thirty-one have been named Massachusetts Rising Stars. The findings will be published in the November 2016 issue of Boston Magazine and in a stand-alone magazine, New England Super Lawyers. 
Mintz Boston Members Michael Renaud and James Wodarski, Washington, D.C. Member Aarti Shah, and Boston Associate Adam Rizk authored this Law360 article on the newly-issued ITC statement discounting the idea that an SEP patent owner cannot bring infringement cases before the commission.
Mintz Members Michael Renaud and James Wodarski and Sandra Badin, Special Counsel and Appellate attorney, authored an Intellectual Asset Magazine column on how U.S. owners of standard-essential patents must be creative in their strategizing to protect the value of their rights.
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This Law360 feature article notes Honda’s removal from the U.S. International Trade Commission’s investigation into several foreign automakers’ “importation of vehicles with infotainment systems that allegedly infringed several patents.”
Firm’s National Healthcare Practice, NY Corporate/M&A and Litigation: General Commercial Among Newest Rankings
This article notes that the Patent Trial and Appeal Board (PTAB) upheld claims in a Straight Path IP Group patent matter. The coverage notes that the decision follows a rare reversal by the Federal Circuit that found the PTAB used an incorrect claim construction previously.
This article notes that the Patent Trial and Appeal Board has upheld the validity of two Straight Path patents in Samsung Electronics Co. Ltd.’s review.
The 2015 Chambers USA: America's Leading Lawyers for Business guide names 52 Mintz, Cohn, Ferris, Glovsky and Popeo, P.C.  attorneys as “Leaders in Their Fields.”
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Events & Speaking

Moderator
Dec
6
2021

8th Annual IP Dealmakers

Dealmakers Forums

Conference Reference Image
Speaker
Nov
14
2021

2021 IPBC Global

IAM

Hyatt Regency Seattle

Conference Reference Image
Moderator
Nov
9
2021
Webinar Reference Image
Speaker
Sep
13
2021

IPWatchdog LIVE 2021

IPWatchdog

Dallas, TX

Conference Reference Image
Panelist
Apr
28
2021

Patent Transactions 2021

IAM

Virtual Event

Conference Reference Image
Moderator
Mar
22
2021

IPBC Connect 2021

IAM

Virtual Event

Conference Reference Image
Moderator
Dec
3
2020

7th Annual IP Dealmakers

Dealmakers Forums

Conference Reference Image
Moderator
Speaker
Sep
24
2020
Conference Reference Image
Speaker
Moderator
Nov
13
2019
Panelist
Sep
10
2019

Patent Masters Symposium

IPWatchdog Institute

Renaissance Arlington Capitol View, 2800 S Potomac Ave, Arlington, VA

Moderator
Nov
7
2018

5th Annual IP Dealmakers Forum

The IP Investment Institute, LLC

New York, NY

Moderator
Sep
18
2018

Patent Licensing 2018

IAM

Golden Gate Club - The Presidio 135 Fisher Loop San Francisco, CA

Moderator
Nov
16
2017

IP Dealmakers Forum

The IP Investment Institute, LLC

New York, NY

Moderator
Sep
20
2017

Patent Licensing 2017

Intellectual Asset Management (IAM)

San Francisco, CA

Panelist
Nov
17
2016

2016 IP Dealmakers Forum

IP Dealmakers

Apella Event Space New York, NY

Speaker
Mar
22
2016

NPE 2016: The Business of Responsible Licensing

Intellectual Asset Management (IAM)

New York City

Moderator
Dec
7
2015

2015 IP Dealmakers Forum

The Apella, New York City

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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.

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)
  • Law Dragon: "500 Leading Litigators in America" (2022)
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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.

Involvement

  • International Trade Commission Trial Lawyers Association
  • Member, Intellectual Property Owners Association, Standards Setting Committee
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Michael T. Renaud

Member / Chair, Intellectual Property Division

Boston