Matt focuses his intellectual property practice on patent litigation, strategic IP counseling, and patent valuation. He has experience representing clients before the International Trade Commission (ITC), Federal district courts, and the Patent Trial and Appeal Board. Matt’s practice covers complex technologies such as microprocessors, graphics processors, RF circuitry, LCD display systems, microelectromechanical systems, audio and video processing, VLSI design, consumer telecommunications systems, and DDR-compliant memory modules and DRAM.
Matt has held lead roles in multiple ITC investigations, where he managed teams of technologists, coordinated complex discovery efforts, developed infringement, validity, and claim construction positions, deposed fact and expert witnesses, and participated in evidentiary hearings. Matt has served as liaison in German enforcement programs, where he worked closely with foreign counsel to develop strategies for infringement and nullity proceedings. Additionally, he has served as counsel and liaison in multiple inter partes review and post-grant proceedings, where he developed and coordinated validity positions for patents being simultaneously asserted in multiple jurisdictions.
Matt also advises clients in complex IP transactions and related diligence, which involves developing and negotiating multiparty agreements and performing extensive transactional diligence on large domestic and international IP portfolios. Matt provides portfolio management strategies for high-technology companies, including those with standard-essential technology in the memory, RF, and telecommunication spaces. In addition to his work with electronic device and software companies, Matt works with university technology transfer offices to provide strategic IP guidance on portfolio management and patent valuation.
Before joining Mintz, Matt was a technology consultant and application architect for a software company in the Boston area. His work focused on enterprise-level data management and software development. Before that, Matt conducted research at Worcester Polytechnic Institute, focusing on molten alloy composition detection via x-ray fluorescence.
Experience
- Netlist Inc. v. SK hynix Inc., et al. (CDCA 8:16-cv-01605; 8:17-cv-01030): Represented plaintiff Netlist, Inc., a California memory module company, in asserting eight patents against the Korean-based memory giant SK hynix. The technology claimed by the asserted patents is essential to the JEDEC DDR4 RDIMM and LRDIMM standards.
- 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 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.
- 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 the proceedings were received in June and August 2017 and confirmed validity of all but 2 of 107 challenged claims. PTAB's determination was upheld on appeal to the Federal Circuit. IPR2016-00386, IPR2016-00387, IPR2016-00388, IPR2016-00389, IPR2016-00390, IPR2016-00391, IPR2016-00393, IPR2016-00394, IPR2016-00395, IPR2016-00687, IPR2016-00691, IPR2016-00708, IPR2016-00770, IPR2016-00786
viewpoints
Apple Backs Down: Commits to Take Global FRAND License to Avoid Exile from UK Market
November 5, 2021 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
Is This Seat Taken? A Chinese IP Court Proclaims Its Authority to Declare Global FRAND Terms
December 7, 2020 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
A Chinese Court recently decided that it has the willingness, and jurisdiction, to set a global licensing rate that is fair, reasonable, and non-discriminatory (“FRAND”) for standard essential patents (“SEP”).
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THE SEP WORLD IN BALANCE: UK Harmonizes with Germany’s Rejection of Implementer Hold Out
August 26, 2020 | Blog | By Michael Renaud, James Wodarski, Daniel Weinger, Matthew Galica
Another major development in global standard essential patent litigation was handed down today, as the UK Supreme Court upheld lower court rulings that forced an efficient infringer of essential patents to accept a global license or face an injunction.
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IT TAKES TWO TO TANGO: The German Federal Supreme Court Acknowledges That Infringer Hold-Out is a Real Problem
July 16, 2020 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
Germany’s highest court has clearly and emphatically placed SEP implementers on notice that hold-out will not be tolerated, and that implementers must proactively share the burden and obligation to timely achieve a FRAND license. An infringer’s conduct during FRAND negotiations is decisively important, and an infringer’s failure to undertake its burden and satisfy its obligations will preclude it from claiming that the patentee acted anti-competitively, or abused a dominant market position.
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Actions Speak Louder Than Words: Germany’s Highest Court tells SEP implementers that simply saying that you are willing to license is not enough, and hold-out will not be tolerated
May 12, 2020 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
After its recent ruling in Sisvel’s favor, Germany’s highest court on patent matters is expected to issue a highly favorable and detailed decision for standard-essential patent (SEP) owners seeking to prevent patent “hold-out” by unwilling licensees.
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PTAB Presses Pause On All Arthrex Remands
May 12, 2020 | Blog | By William Meunier , Daniel Weinger, Matthew Galica
On Friday, May 1, 2020, Chief Administrative Patent Judge Scott R. Boalick of the Patent Trial and Appeal Board (“PTAB”) paused all activity in the significant number of PTAB cases remanded to it from the Federal Circuit under Arthrex (discussed here).
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Federal Circuit Denies En Banc Rehearing of Panel Decision in Arthrex, Which Held PTAB Appointments Were Unconstitutional
March 25, 2020 | Blog | By Daniel Weinger, Michael Newman, Matthew Galica
This week the en banc Federal Circuit declined to revisit a panel ruling that found the appointment of Administrative Patent Judges (“APJs”) of the Patent Trial and Appeal Board (“PTAB”) violates the Appointments Clause of the Constitution. This decision is notable for at least two reasons. First, it declined to review or disturb the panel’s conclusion and its remedy—vacatur and remand of PTAB decisions made by unconstitutionally appointed APJs. Second, four of the Federal Circuit judges dissented, disagreeing with the panel’s finding and saying that its corresponding remedy improperly rewrites the statute contrary to Congressional intent.
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Mintz Rings in 2020 with Top 10 Recognition for ITC Practice
January 6, 2020 | Blog
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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Out with the old, and in with the new: joint policy statement and recent cases confirm that injunctive relief on standard-essential patents is available at the ITC
December 23, 2019 | Blog | By Michael Renaud, James Wodarski, Andrew DeVoogd, Matthew Galica
When licensing discussions with an intransigent implementer break down, SEP owners face a difficult question: what remedies are available (injunctive relief or damages) in each U.S. court (International Trade Commission and U.S. district courts) as redress against infringement?
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Key Considerations for Global SEP Litigation - Part 2
November 5, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
The adoption of multiple, standardized technologies looms on the horizon. This presents the challenge of balancing innovator’s intellectual property rights with implementer’s desire for fair access to technology. As more implementers adopt efficient infringement to circumvent this equilibrium altogether, standard-essential patent (“SEP”) licensing disputes have increased.
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News & Press
Mintz has secured a significant and complete defense verdict for client Princeton CarbonWorks, Inc. in the U.S. District Court for the Southern District of Florida. The Connecticut-based bicycle wheel maker was accused of infringing two patents by competitor and industry giant SRAM, LLC.
Mintz Guides Nanoco Group in $150M Patent Litigation Settlement
February 03, 2023
BOSTON – Nanoco Group plc, a world leader in the development and manufacture of cadmium-free quantum dots and other nanomaterials, has announced a $150 million settlement in its litigation with Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. alleging infringement of Nanoco’s patented technology.
Mintz Promotes Nine to Member
December 15, 2021
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.
The PTAB Has Another Appointment With the Federal Circuit + SEPs Have a Little More Bite at the ITC
October 30, 2019
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.
SK Hynix Memory Products Infringe Netlist IP, ITC Judge Finds
October 22, 2019
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.
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.
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.
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.
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2019
Startup Legal: Feedback from Boston's Top Startup Lawyers
Mintz Levin, One Financial Center, Boston, MA
Recent Insights
Mintz has secured a significant and complete defense verdict for client Princeton CarbonWorks, Inc. in the U.S. District Court for the Southern District of Florida. The Connecticut-based bicycle wheel maker was accused of infringing two patents by competitor and industry giant SRAM, LLC.
BOSTON – Nanoco Group plc, a world leader in the development and manufacture of cadmium-free quantum dots and other nanomaterials, has announced a $150 million settlement in its litigation with Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. alleging infringement of Nanoco’s patented technology.
