Michael Renaud is a Member at Mintz who is recognized as one of the World’s Leading IP Strategists by Intellectual Asset Magazine, appearing in its 2021 inaugural edition of the Strategy 300 Global Leaders guide and repeatedly appearing in its annual IAM Strategy 300 publication. He is an experienced litigator and the central tactician in developing and implementing multinational enforcement, licensing, and litigation strategies for global corporations. Michael and his teams help clients realize significant value by identifying patent assets which can be enforced to protect clients’ competitive positions and generate licensing revenue. He also 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 attack them.
As firmwide Chair of the Intellectual Property Division, Michael leads an international team of IP prosecutors, litigators, and transaction specialists. As an engineer with 20 years’ experience in intellectual property, Michael achieves success both in and out of the courtroom stemming from his uncommon combination of sound legal judgment, strong business acumen, and experience with and sensitivity to changing market conditions. Michael is driven to help his clients attain their business objectives and has years of experience evaluating and valuing diverse patent portfolios. His cutting edge work on SEP valuation and enforcement is supported by his unmatched ability to identify untapped assets and value drivers.
Clients rely on Michael to develop multinational strategies tailored to their specific needs. He is known for his experience with developing comprehensive monetization strategies; conducting IP due diligence; counseling investment firms on implementing strategies for leveraging patent value; negotiating deals and generating revenue through strategic partnerships; and prosecuting coordinated international enforcement actions.
Most successful 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 U.S. International Trade Commission, and in global jurisdictions including China, Europe, and the UK. Recent successful Mintz-coordinated global efforts have involved regional IP courts in Shanghai, China, and in Dusseldorf and Mannheim, Germany, in addition to multiple U.S. venues.
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.
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.”
As investors and business-minded IP litigators, we see many situations where IP holders get the short end of the stick. But one stands out from the rest: joint development relationships. Too often we see great American startups losing their technology and competitive edge to joint development partners/investors with a front-row seat to everything. What follows is a multi-part series that we hope any company going down the joint development path will take to heart. We start with tips to prevent a problem. Future installments will focus on what companies can do after their “partner” uses the guise of venture investment to steal critical IP and know-how.
In a previous article, we laid out the basics of “patent pools”, which license patents that are declared essential for technology standards. A recent article published in the University of San Diego Law Review, titled Glory Days: Do the Anticompetitive Risks of Standards-Essential Patent Pools Outweigh Their Procompetitive Benefits? (Glory Days), criticized patent pools, alleging inefficiencies and anticompetitive risks of pools for standard essential patents (SEPs). While the authors make several rebuttable suggestions, the crux of the authors’ complaints about SEP patent pools is that SEP pools should bear all the burdens and expenses of verifying with a litigation-grade level of certainty that all patents in the pool are essential and valid before an implementer will even engage in a licensing discussion with the pool. This approach is not economically or practically realistic and is designed to justify hold out and provide cover for implementers to refuse to engage in licensing discussions.
Implementers of standard essential technology such as Long-Term Evolution (LTE) are constantly attempting to reduce costs for implementation. This behavior has led to certain inefficiencies in the marketplace, such as innovators not being compensated for their contributions to technological standards. The symbiotic relationship between innovators and implementers cannot continue where one side takes all the risk and the other side reaps all the reward. One construct put in place by innovators to extract compensation from the marketplace are patent pools that license patents that are declared essential for technology standards.