Barnes & Thornburg LLP
Matthew counsels clients on invention harvesting, patent and trademark portfolio management, intellectual property acquisition, domestic and international patent and trademark prosecution, and intellectual property transactions. He has prepared and prosecuted more than 750 patent applications and appeals on behalf of clients, primarily in the mechanical, electrical, electromechanical and software arts.
Additionally, Matthew conducts IP asset management for his clients, having extensive experience in opinion work and performing due diligence investigations and analyses, including in connection with the sale and purchase of businesses and IP assets. His practice includes preparing and reviewing licenses, technology transfer agreements, joint development agreements and confidentiality agreements.
Matthew often acts as outside in-house IP counsel for his clients. He develops processes and procedures for his clients, from the stage of invention disclosure, to obtaining protection and through to enforcement or other monetization, to allow his clients to fully maximize the value of their intellectual property.
Matthew has also served as trial counsel on IP litigation matters, including patent, trademark and copyright infringement, trade secret, unfair competition and false advertising actions in federal district courts, federal courts of appeals, state courts and the International Trade Commission (ITC). He has handled virtually all aspects of the litigation and trial process, and has served as lead counsel in inter partes review matters before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office (USPTO). Additionally, Matthew has developed licensing strategies and other business solutions to resolve contested matters without the need for litigation.
Matthew's clients span a wide range of technologies and industries, including consumer products, medical devices, surgical devices, orthopedic implants, commercial and medical packaging, hospital beds, patient support surfaces, wireless communication, Wi-Fi, cellphones, semiconductors, semiconductor packaging, light-emitting diodes (LED), data communications, data networks, data storage, software, mobile device apps and Ethernet switching. He also works with clients in areas such diesel engines, paper converting, beverage containers, automated beverage dispensing systems, commercial printing, consumer products, barbecue grills, children's toys, electric ride-on vehicles, wagons, scooters, bicycles, non-lethal projectiles and launching devices, food processing equipment, speakers, microphones and window hardware.