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Matthew S. Galica

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[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. 

Experience

  • RoadRunner Recycling, Inc. v. Recycle Track Systems, Inc. et al, 3:23-cv-04804 (N.D. Cal.) – Defended clients Recycle Track Systems and RecycleSmart Solutions against California Uniform Trade Secret Act (CUTSA) and Defend Trade Secret Act (DTSA) causes of action in the Northern District of California in a suit brought by competitor RoadRunner Recycling related to waste metering technology.  Obtained full defense verdict via summary judgment with respect to all of RoadRunner’s trade secret allegations.   
  • 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.
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viewpoints

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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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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As a patent owner involved in patent litigation, you must consider numerous factors when negotiating a settlement agreement. An important contemplation is timing, because finalizing a settlement agreement at the wrong juncture of your legal proceedings can have devastating results.
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The Patent Trial and Appeal Board recently designated as precedential its decision in Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015)  addressing the scope of estoppel under 35 U.S.C. § 325(e).
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News & Press

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The Mintz IP litigation team recently secured a successful outcome for client Recycle Track Systems (RTS). RTS provides waste management brokerage services that optimize trash pickup schedules, reduce waste, and enhance waste diversion for large corporations and municipalities. RTS provides this solution through a combination of proprietary software and hardware technology—namely, its Pello product.  RoadRunner Recycling, a former component supplier and partner of RTS, filed a trade secret suit against RTS over its Pello sensor technology. Specifically, RoadRunner sued RTS in the Northern District of California for trade misappropriation under the California Uniform Trade Secret Act and Defend Trade Secret Act and included in its complaint a number of breach of contract allegations as well.  

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Mintz is pleased to announce that Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members Matthew GalicaFrank GerratanaMarguerite McConiheMichael NewmanAdam Rizk, and James Wodarski have been named to the 2024 IAM Strategy 300: The World’s Leading IP Strategists list.

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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.

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Mintz is pleased to announce that Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members Matthew GalicaFrank GerratanaMarguerite McConiheMichael NewmanAdam RizkAdam SamanskyDaniel Weinger, and James Wodarski have been named to the 2023 IAM Strategy 300: The World’s Leading IP Strategists list.

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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.

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Mintz secured a $150 million settlement for Nanoco Group plc in the company’s patent infringement litigation against Samsung Electronics Co. Ltd. and Samsung Electronics America Inc. Mintz Member Michael Newman led a team that represented the maker of cadmium-free quantum dots and other nanomaterials in a federal district court in Texas and before the US Patent and Trademark Office.

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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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Events & Speaking

Panelist
Sep
12
2019

Startup Legal: Feedback from Boston's Top Startup Lawyers

Mintz Levin, One Financial Center, Boston, MA

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Recognition & Awards

  • IAM Strategy 300: The World's Leading IP Strategists (2023, 2024)

  • IAM Strategy 300: Global Leaders (2024)


     

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