Matthew Karambelas is an experienced patent litigator who has represented clients and organized trial teams in cases spanning several Investigations at the U.S. International Trade Commission, cases in the U.S. District Courts, and appeals before the U.S. Court of Appeals for the Federal Circuit. Matthew’s clients are focused on technologies ranging from high tech and software, to life sciences and medical products. He has recently worked on cases for clients with patents in semiconductor manufacturing, microbiology and genetic engineering, graphics processing, telecommunications, medical-quality flocked swabs, and health care information systems. In the past year, he has played key roles on cases at the International Trade Commission to successfully enforce patents for microbiology companies developing unique methods of producing beneficial oligosaccharides, and for semiconductor companies like GlobalFoundries, against the largest semiconductor foundry in the world. In addition, Mr. Karambelas has significant experience in evaluating patent portfolios, offering clients useful advice on assessment and valuation of key aspects of their U.S. patent holdings.
During law school, Matthew served a judicial intern for the Hon. Dennis J. Curran of the Massachusetts Superior Court. In that role, he assisted the management of both the Judge’s civil session as well as the Judge’s pilot program on the effectiveness of mediation.
International Trade Commission
- 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. 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, a video codec company headquartered in San Diego, in enforcing patents before the ITC in the District of Delaware. The asserted patents involve innovations relating to digital rights management and streaming media. LG and Samsung settled after the Markman order was issued, leaving TCL as the sole remaining respondent. Shortly after the seven day evidentiary hearing held in July 2021, one of the two principal suppliers of the accused streaming technology to TCL, namely Roku, stepped in and took a license to DivX’s portfolio, thus partially resolving DivX’s claims against TCL. Prior to the court issuing a decision on the merits, DivX and TCL entered into a bilateral settlement agreement resolving DivX’s remaining claims against TCl and bringing an end to all pending litigation.
- Certain Human Milk Oligosaccharides and Methods of Producing the Same (337-TA-1120) - Represented Complainant Glycosyn LLC against Respondent Jennewein Biotechnologie GmbH, a large global competitor, at the International Trade Commission, involving an evidentiary hearing before an Administrative Law Judge. Glycoysn’s innovative method of manufacturing a key beneficial ingredient in infant formula, 2'-fucosyllactose oligosaccharides, was found by the Commission to be infringed by Jennewein’s manufacturing method. The Commission issued a Limited Exclusion Order against Jennewein’s infringing 2'-fucosyllactose oligosaccharides following review of the ALJ’s finding of a violation. Matthew’s experience in Glycosyn’s ITC Investigation involved day-to-day management of the case, overseeing expert testing of enzyme activity in Germany, and taking live direct and cross-examination of witnesses at trial.
- 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 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 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 Administrative Law Judge’s Initial Determination was pending.
Federal District Court
- Preservation Wellness Technologies, LLC v. NextGen Healthcare Information Systems, LLC, 2:15-cv-01562 (E.D. Tex) – Successfully defended NextGen, obtaining dismissal of the complaint after oral argument. With U.S. Federal Circuit Judge William Bryson presiding over the case, the court held that the patent at issue was not patent-eligible under the U.S. Supreme Court’s Alice decision. Mintz also represented NextGen on appeal to the Federal Circuit and the decision was upheld.
- Represents immigration clients seeking asylum protection in the United States from countries in Asia and South America.
- Received fully favorable appeal decision from the Social Security Administration’s Office of Disability Adjudication and Review for a claimant with mental health disabilities including depression and PTSD, overturning the SSA’s Initial Determination denying the claimant any benefits.
SCOTUS Declines to Answer Calls for Clarification in American Axle v. Neapco
July 13, 2022 | Blog | By Brad M Scheller , Andrew DeVoogd, Matthew Karambelas, Amanda Metell
Strengthen Software Claims Against Alice Challenges through Coined Terms and Depicting Technical Advantages in Figures
February 4, 2022 | Blog | By Daniel Weinger, Mark Hammond, Matthew Karambelas
When It Isn’t Better Late Than Never: ALJ Reins in on Redesigns First Disclosed in the Last Week of Fact Discovery
September 21, 2021 | Blog | By Michael Renaud, Adam Rizk, Matthew Karambelas, Tianyi Tan
Federal Circuit: Licensees’ Failure to Mark Eliminates Entitlement to Pre-Suit Damages
July 27, 2020 | Blog | By Adam Samansky, Peter Cuomo, Matthew Karambelas, Courtney Herndon
Mintz Rings in 2020 with Top 10 Recognition for ITC Practice
January 6, 2020 | Blog
ITC rejects minimum threshold requirement for domestic industry economic prong and emphasizes the importance of contextual evidence and case-by-case analyses
November 4, 2019 | Blog | By Michael Renaud, Andrew DeVoogd, Matthew Karambelas, Nana Liu
ITC suggests 5% Threshold for Domestic Industry Assessment; order may impact tech companies
September 23, 2019 | Blog | By Michael Renaud, Andrew DeVoogd, Matthew Karambelas, Nana Liu
Delaware District Court Finds No Work-Product or Common Legal Interest Protection for Certain Pre-Suit and Pre-Agreement Documents and Communications Between Patent Owner and Litigation Financing Company
February 21, 2018 | Advisory | By Michael Renaud, Andrew DeVoogd, Matthew Karambelas
Software is Still Patent Eligible
February 16, 2017 | Advisory | By Michael Van Loy, Michael Renaud, Sandra Badin, Matthew Karambelas, Nicholas Mouton
Supreme Court Rules Against Apple in Design Patent Case with Samsung, Remands to Federal Circuit to Formulate Test for Identifying Relevant “Article of Manufacture”
December 7, 2016 | Alert | By James Wodarski, Matthew Karambelas
News & Press
International Comparative Legal Guide – Patents 2023
October 7, 2022
Levelling the Playing Field in ITC Patent Cases by Identifying Redesigns to a Set Deadline
September 21, 2021
Fed. Circ. Upholds ITC Infringement Finding On Milk Patent
September 20, 2021
International Comparative Legal Guide to Patent Laws and Regulations 2022: United States
September 15, 2021
Samsung, LG Settle DivX Patent Fights Over Smart TVs
July 30, 2021
Novel Outcome at the ITC: Patent Claims Invalidated under Alice in the 100-Day Pilot Program
January 3, 2017
Recognition & Awards
- Managing Intellectual Property: Rising Star (2021-2022)
- Ranked 17th by Patexia among the Most Active ITC Attorneys Representing Complainants (2023)
- Ranked 11th by Patexia among the Best Performing ITC Attorneys Representing Complainants (2023)