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Matthew A. Karambelas

Associate

[email protected]

+1.617.348.1831

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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.

Education

  • Boston College (JD)
  • Boston College (BA, Mathematics, Political Science)

Experience

International Trade Commission

  • 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 (EDTX) – 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.

Pro Bono

  • 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.

Recent Insights

News & Press

Viewpoints

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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

Recently, in Packet Intelligence LLC v. NetScout Sys., Inc., No 19-2041 (July 14, 2020), the Court of Appeals for the Federal Circuit reversed a jury verdict of $3.5 million in pre-suit damages and vacated the trial court’s enhancement of that award because licensees of the asserted patents failed to properly mark allegedly patent practicing products.
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Mintz is recognized as among the top ten firms in ITC Section 337 litigation by Patexia in its inaugural "ITC Intelligence Report". We are pleased to be among the firms included in this publication and thrilled that it has come on the heels of a great year at the ITC for the Mintz team.
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In a recent decision clarifying the legal standards of the International Trade Commission’s domestic industry requirement, the Commission has upheld, with modified reasoning, Chief Administrative Law Judge Bullock’s initial determination (“ID”), finding no domestic industry in Certain Carburetors and Products Containing Such Carburetors, Inv. No. 337-TA-1123, Comm’n Op. (Oct. 28, 2019). 
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ITC suggests 5% Threshold for Domestic Industry Assessment; order may impact tech companies

September 23, 2019 | Blog | By Michael Renaud, Aarti Shah, Andrew DeVoogd, Matthew Karambelas, Nana Liu

Recently, Chief Administrative Law Judge (“CALJ”) Bullock of the U.S. International Trade Commission (“ITC”), in Certain Carburetors and Products Containing Such Carburetors, Inv. No. 337-TA-1123, Order No. 77, suggested that “significant” or “substantial” domestic industry investments must amount to greater than 5% of domestic industry product sales in the United States. 
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Recently, the District of Delaware held that a there was no work-product protection, and no common legal interest protection covering communications and documents shared between a patent owner and a third-party litigation financier, where the exchange occurred prior to any written agreement signed between the two parties and prior to the filing of any litigation.
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Software is Still Patent Eligible

February 16, 2017 | Advisory | By Michael Van Loy, Michael Renaud, Sandra Badin, Matthew Karambelas, Nicholas Mouton

In recent years, software patents have come under fire from legislation (the American Invents Act) that has generally made patents easier to invalidate, and from court decisions (the Supreme Court’s decision in Alice v. CLS Bank1 and its progeny) that have made computer-implemented inventions more vulnerable to subject matter eligibility challenges.
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Yesterday, the Supreme Court held that the relevant “article of manufacture” for arriving at a damages award for design patent infringement need not be the end product sold to the consumer, but may be only a component of that product.
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Intellectual Ventures Petitions Federal Circuit for Full Court Review

November 18, 2016 | Blog | By Michael Renaud, Sandra Badin, Matthew Karambelas

Earlier this week, Intellectual Ventures (IV) petitioned the full Federal Circuit to review the panel opinion in Intellectual Ventures v. Symantec, which invalidated two of its patents under section 101.  Both patents—the ’050 and the ’610—are directed to filtering email or file content.
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In McRO, Federal Circuit Provides Further Guidance on Section 101

September 22, 2016 | Blog | By Michael Renaud, Michael Newman, Matthew Karambelas

Two years after the Central District of California invalidated two 3-D animation patents under Section 101, the Federal Circuit reversed that court’s decision, finding that the lower court oversimplified the claims of a computer-related invention.
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A Novel Outcome at the International Trade Commission: Patent Claims Invalidated Under Alice in the 100-Day Pilot Program

August 26, 2016 | Advisory | By James Wodarski, Andrew DeVoogd, Daniel Weinger, Matthew Karambelas

On August 22, 2016, Administrative Law Judge David Shaw of the International Trade Commission (“ITC” or “Commission”) issued his final initial determination (“the ID”) in Certain Portable Electronic Devices and Components Thereof, Inv. No. 337-TA-994.
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News & Press

In this column, Mintz attorneys James Wodarski, Andrew DeVoogd, Daniel Weinger, and Matthew Karambelas analyze the decision made by the ITC about patent claims that have been negated by Alice Corp v. CLS Bank International in the 100-Day Pilot Program.