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Matthew S. Galica

Associate

[email protected]

+1.617.348.4859

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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. 

Education

  • Suffolk University Law School (JD, IP Concentration with Distinction)
  • Boston University (BS, Mechanical Engineering)

Recent Insights

News & Press

Viewpoints

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PanOptis Patent Management, LLC (“PanOptis”) was recently awarded enhanced damages and ongoing royalties as a result of Huawei Technology Co. Ltd. (“Huawei”) infringing five of its patents, four of which were alleged to be essential to the 4G LTE technology standard.  Despite the successful legal outcome, the size of PanOptis’ cumulative damages award for its standard-essential patents was less than some observers anticipated.  This result emphasizes the importance of taking a global enforcement approach—leveraging international fora—to recoup meaningful compensation for standard-essential patents.
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Designing Around a Monopoly: the Public Interest Dispute between Qualcomm and Apple Takes a New Turn

March 12, 2019 | Blog | By Michael Renaud, James Wodarski, Sandra Badin, Matthew Galica

As we mentioned in December, the International Trade Commission issued a notice to review the Final Initial Determination and Recommended Determination issued by Administrative Law Judge Pender in Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065 (“Certain Mobile Electronic Devices”), in which, despite finding that a valid patent was infringed and all jurisdictional requirements met, ALJ Pender had recommended that no exclusion order be issued against Apple because such an order would be contrary to the public interest.
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A recent order from the Northern District of California in AU Optronics Corporation America v. Vista Peak Ventures, LLC, 4:18-cv-04638 (CAND 2019-02-19) (“AU Optronics”),  provides further guidance for patent venue analysis post-TC Heartland.  Specifically, the order teaches that bringing a patent suit against only a foreign parent company while omitting its domestic subsidiary will likely not run afoul of TC Heartland’s seminal venue holding. 
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The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential opinion finding that a lower court had improperly incorporated an embodiment from the specification of the asserted patents into the claims.  In its decision, the CAFC reaffirmed longstanding claim construction law: the claims of a patent are interpreted in light of a specification, but not everything expressed in the specification must be read into all of the claims.
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“A New Day” for Amending Claims in Post-Grant Proceedings

October 29, 2018 | Blog | By William Meunier, Daniel Weinger, Matthew Galica

U.S. Patent and Trademark Office Director, Andrei Iancu, recently gave a speech to the American Intellectual Property Law Association where he discussed a new rule proposal aimed at improving the patent amendment process during post-grant proceedings.  Specifically, he informed the audience—and patent practitioners, generally—that the USPTO “will formally publish a notice seeking comments on a new claim amendment process for post grant proceedings.”  The stated purpose of the proposed rule change is to “ensure balance” in post-grant proceedings by making the amendment process “feasible and meaningful” for the owners of challenged patents.  
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International Trade Commission Clarifies Domestic Industry Requirements in Favor of Patent

August 6, 2018 | Alert | By Michael Renaud, James Wodarski, Aarti Shah, Andrew DeVoogd, Matthew Galica

A recent International Trade Commission decision, Vacuum Cleaning Devices, improves a patent owner’s ability to demonstrate that it possesses a statutorily required “domestic industry” and can therefore obtain relief from the Commission when others infringe its intellectual property. This alert reviews the Vacuum Cleaning Devices ruling, which serves to better align the statutory purpose of the ITC’s domestic industry requirement with contemporary business practices.
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Recent ITC decision clarifies and eases domestic industry burden for patent holders

July 17, 2018 | Blog | By Aarti Shah, Andrew DeVoogd, Matthew Galica

A recent decision by the International Trade Commission (“ITC” or the “Commission”) improves intellectual property holders’ ability to prove that they have a “domestic industry” and obtain relief for infringement from the Commission. 
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USPTO Publishes New Rule Governing Privilege for Patent Attorneys and Agents

November 14, 2017 | Blog | By Matthew Hurley, Matthew Galica, Anthony Faillaci

Earlier this week, the United States Patent and Trademark Office (“USPTO”) published a new rule governing when privilege exists for communications between clients and their domestic or foreign patent attorneys and patent agents before the Patent Trial and Appeal Board (“PTAB”).
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AQUA PRODUCTS: The Federal Circuit Shifts The Burden of Proof On Amending Claims During An IPR From The Patent Owner To The Petitioner

October 5, 2017 | Blog | By Michael Renaud, William Meunier, Michael Newman, Matthew Galica

The United States Court of Appeals for the Federal Circuit’s recent decision in Aqua Products Inc., v. Matal materially changes the burden of proof associated with the patentability of amended claims during an inter partes review (“IPR”), shifting the burden from the Patent Owner seeking the amendment to the IPR Petitioner opposing it.
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Patent-Agent Privilege and the USPTO’s Proposed New Rule

November 1, 2016 | Blog | By Matthew Hurley, Matthew Galica, Anthony Faillaci

Several recent court decisions have shed light on the patent agent privilege, and now the U.S. Patent and Trademark Office (USPTO) is seeking to weigh-in on the issue.
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News & Press

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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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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.
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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.

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