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
- SRAM LLC v. Princeton CarbonWorks, Inc., 9:21-cv-80581-RKA (S.D.Fla.) – Represented defendant Princeton CarbonWorks (PCW) in bet-the-company litigation, achieving a complete jury trial victory in the Southern District of Florida. SRAM, the second largest bicycle component manufacturer in the world, sued on two patents relating to high-end carbon fiber bike wheels and sought to put PCW out of business. After a two-week trial in February 2023, Mintz persuaded a nine-person jury to reach a defense verdict of no infringement on either patent, and no damages.
viewpoints
Key Considerations for Global SEP Litigation - Part 1
October 30, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
Litigation involving standard-essential patents (“SEPs”) is on the rise. The now longstanding and disturbing impact of efficient infringement by recalcitrant implementers is the predominant cause of the increase.
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One Size Does Not Fit All When It Comes to Economic Theories Used to Determine Royalty Rates
July 1, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
Calculating royalty rates as part of a patent dispute often becomes a hotly-disputed issue, where opposing economic theories from expert witnesses are pinned against one another. As a litigant, care must be taken when deciding which economic theory to advance—and what facts to rely on—in support of a particular royalty rate. Given the varying and unique nature of disputes, a singular economic approach to determining a royalty rate is impractical and, oftentimes, inappropriate.
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Score This One in Favor of Standard-Essential Patent Owners: Recent Decision Makes Satisfying FRAND Obligations Easier
June 5, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
A recent decision in the Eastern District of Texas should provide standard-essential patent (“SEP”) owners with more clarity and optimism when negotiating SEP licenses. Coming on the heels of Judge Koh’s decision in the FTC’s dispute with Qualcomm, Judge Gilstrap found Ericsson to have satisfied its fair, reasonable and non-discriminatory (“FRAND”) obligations when negotiating with HTC due in large part to a finding that it had negotiated in good faith.
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PanOptis’ Recent Victory against Huawei Demonstrates Why an International Enforcement Approach Is Advisable for Standard-Essential Patents
March 21, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
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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Northern District of California Holds That Patent Suit Against Only Foreign Entities Is Permissible Even Where Inclusion of Domestic Entities Would Alter Venue Analysis
March 1, 2019 | Blog | By Andrew DeVoogd, Daniel Weinger, Matthew Galica
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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Continental Circuits LLC v. Intel Corp., et al: Federal Circuit Reemphasizes Prohibition on Importing a Preferred Embodiment into Patent Claims
February 20, 2019 | Blog | By Andrew DeVoogd, Matthew Galica
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, 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 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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News & Press
BOSTON – Nine Intellectual Property attorneys from Mintz have been recognized in the 2024 edition of the Intellectual Asset Management (IAM) Strategy 300 Global Leaders Guide.
Mintz is pleased to announce that Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members Matthew Galica, Frank Gerratana, Marguerite McConihe, Michael Newman, Adam Rizk, Adam Samansky, Daniel Weinger, and James Wodarski have been named to the 2023 IAM Strategy 300: The World’s Leading IP Strategists list.
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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Recognition & Awards
Named to IAM Strategy 300: Global Leaders (2024)
Recent Insights
BOSTON – Nine Intellectual Property attorneys from Mintz have been recognized in the 2024 edition of the Intellectual Asset Management (IAM) Strategy 300 Global Leaders Guide.
Mintz is pleased to announce that Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members Matthew Galica, Frank Gerratana, Marguerite McConihe, Michael Newman, Adam Rizk, Adam Samansky, Daniel Weinger, and James Wodarski have been named to the 2023 IAM Strategy 300: The World’s Leading IP Strategists list.
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.
