Laurence & Phillips IP Law

About

Matt Phillips

Representative Matters

POST-GRANT PROCEEDINGS

Mr. Phillips has served as counsel in 89 inter partes reviews (IPRs), post-grant reviews (PGRs), and covered business method patent reviews (CBMs).  He has been lead counsel in 44 of those cases.  In addition, he has been lead counsel in approximately 14 contested reexaminations.  Representative matters include:

  • T-Mobile & Verizon v. Kaifi, LLC (Control Nos. 90/014,798 and and 90/014,808) – Defending U.S. Patent No. 6,922,728 in two merged ex parte reexaminations, requested by T-Moblie and Verizon, respectively. The patent relates to switching networks connections for a mobile communication device and covers WiFi calling technology. Pending.

  • Samsung Elecs. Co. v. Acorn Semi, LLC (IPR2020-01182, IPR2020-01183, IPR2020-01204, IPR2020-01205, IPR2020-01206, IPR2020-01207, IPR2020-01241, IPR2020-01264, IPR2020-01279, and IPR2020-01282) – Lead counsel representing the owner of patents directed at reduced-resistance metal-semiconductor junction in set of ten IPRs. The Board denied institution in three cases and has so far issued final written decisions in four cases. The patents were litigated to a $25 million verdict against the petitioner while the IPRs proceeded in parallel. So far, the Board’s decisions have confirmed the patentability of three of the eight infringed claims.

  • Shure, Inc. v. ClearOne, Inc. (PGR2020-00079) – Lead counsel representing the owner of patent directed at beamforming microphone array technology. Pending.

  • AT&T v. Kaifi, LLC (IPR2020-00889) – Lead counsel representing the owner of U.S. Patent No. 6,922,728 directed at switching networks connections for a mobile communication device (like WiFi calling). Settled before a decision on institution.

  • Flywheel Sports, Inc. v. Peloton Interactive, Inc. (IPR2019-00294, IPR2019-00295, IPR2019-0564, and IPR2019-01411) – Lead counsel representing the owner of several patents for at-home exercise cycling technology. Settled under confidential terms two weeks before the oral hearing in the first three cases. The petitioner filed this paper in the related district court case.

  • Red Hat, Inc. v. Elecs. & Telecommc’ns Research Inst. (IPR2019-00465 and IPR2019-00467) – Lead counsel representing the owner of U.S. Patent No. 6,781,436, directed at logical volume management for use in a RAID (redundant array of inexpensive disks). Matt led a team that convinced the PTAB not to institute trial for either of the two IPR petitions filed.

  • Shure, Inc. v. ClearOne, Inc. (IPR2017-01785) – Lead counsel representing the owner of U.S. Patent No. 9,264,553, directed at a combination of beamforming microphone arrays and acoustic echo cancelation. Matt led a team that won the IPR trial, defeating a challenged based on a reference that the district court in a related infringement action had said raised a substantial question of validity. On appeal, the Federal Circuit issued a Rule-36 affirmance.

  • ClearOne, Inc. v. Shure, Inc. (IPR2019-00683) – Lead counsel representing the petitioner challenging U.S. Patent No. 9,565,493, directed at a beamforming microphone array technology. The PTAB found all original claims except two narrow dependent claims unpatentable. An appeal is pending.

  • NVIDIA Corp. v. Polaris Innovations Ltd. (IPR2017-00381, IPR2017-00382, IPR2017-00901, IPR2017-01346, IPR2017-01500, IPR2017-01781, IPR2017-01819, and IPR2017-01832) – Lead counsel representing the owner of six patents relating to computer memory technology.  Matt led a team that avoided institution in three of the eight cases and won the IPR trial partially or completely in three other cases. Appeals are pending in the other two cases. Settled under confidential terms.

  • [Various Parties] v. Elecs. & Telecommc’ns Research Inst. (IPR2013-00635, IPR2014-00152, IPR2014-00901, IPR2014-00949, and IPR2015-00549) – Lead counsel representing the owner of U.S. Patent No. 6,978,346, directed at a redundant interconnection for a RAID (redundant array of inexpensive disks) in a series of six IPR petitions filed by Dell, Hewlett-Packard, Net-App, VMware, IBM, and Oracle against the patent, raising or attempting to raise a total of 15 different patentability challenges. Matt led a team that convinced the PTAB not to institute trial for three of those petitions and won the trials in the other three cases. In the only appeal that went to decision, the Federal Circuit affirmed under Rule 36.

  • Kingston Tech. Company, Inc. v. PAVO Solutions, LLC (fka CATR Co.) (IPR2015-00149 and IPR2015-00559) – Lead counsel representing the patent owner in two IPRs for a patent directed to flash memory devices with a rotary cover. Three of the four independent claims in the patent survived the trials. The Federal Circuit affirmed all aspects of the Board’s decision favorable to the patent owner and reversed the Board’s adverse decisions on all appealed claims held unpatentable below. A jury later found the patent wilfully infringed by Kingston and awarded PAVO over $7.5 million, which was later enhanced by over $3.75 million.

  • Volkswagen Group of Am., Inc. v. Light Transformation Techs. LLC (IPR2013-00238 and IPR00244) – Lead counsel representing the owner of patents for a luminaire and optical transformer. Convinced the PTAB not to institute trial on a variety of grounds. Settled confidentially thereafter.

  • GE Lighting Solutions, LLC v. Farlight LLC (IPR2014-00323) – Lead counsel representing the owner of patent for an optical transformer. Settled confidentially.

  • Medtronic, Inc. v. Endotach LLC (IPR2014-00100 and IPR2014-00695) – Represented the owner of a patent for an intravascular stent. Defeated a motion for joinder of a second petition to add additional challenges based on additional prior art.

  • Xilinx v. PLL Techs., Inc. (IPR2054-00148) – Lead counsel representing owner of patent for a PLL (phase-locked loop) based clock synthesizer.

  • Cellco P’ship v. Orlando Commc’ns LLC (IPR2015-01567 and IPR2015-01573) – Lead counsel representing the owner of telecommunication patents. Implemented a strategy to avoid the expense of trial.

  • Neptune Generics LLC v. AUSPEX Pharms., Inc. (IPR2015-01313) – Part of team that represented the owner of a biopharmaceutical patent against an IPR petition filed by a hedge fund. Convinced the PTAB not to institute trial.

  • [Various Parties] v. Horizon Therapeutics, Inc. (IPR2015-01117, IPR2015-01127, IPR2016-00283, IPR2016-00284, and IPR2016-00829) – Part of team representing owner of patents for the drug Ravicti® in IPRs filed by generic drug companies. Won trial for one patent, and then won the appeal of trial decision

  • [Various Parties] v. Horizon Therapeutics, Inc. (IPR2015-01718, IPR2015-01773, IPR2015-01774, and IPR2015-01775) – Part of team representing owner of patents for the drug Vimovo® in IPRs filed by generic drug company and hedge fund. Convinced the PTAB not to institute trial in two cases and won the trials in the other two cases.

  • Motorola Mobility LLC v. Intellectual Ventures I LLC (CBM2014-00083 and CBM002014-00084) – Part of team representing owner of fundamental Internet technology patents. Convinced the PTAB not to institute trial.

  • Motorola Mobility LLC v. Intellectual Ventures I LLC (Control Nos. 95/002,095; 95/002,095; 90/013,205, and 90/013,206) – Led team representing owner of fundamental Internet technology patents in a pair of inter partes reexaminations and ex parte reexaminations.

  • [Anonymous] v. Seoul Semiconductor Co. (Control Nos. 90/014,226; 09/014,231; and 90/014,232) – Filed ex parte reexamination requests that have resulted in cancellation of all claims of all target patents, which relate to semiconductor technology.

Federal CIRCUIT APPEALS

  • Principal counsel for appellant in SecureWave Storage Solutions, Inc. v. Unified Patents, LLC, No. 2020-2244 and SecureWave Storage Solutions, Inc. v. Micron Tech. Inc., No. 2020-1944 (consolidated).

  • Principal counsel for appellee in Shure Inc. v. ClearOne, Inc., No. 2019-1755.  Court affirmed trial victory below under Rule 36.

  • Principal counsel for appellant in In re. Polaris Innovations, Ltd., No. 2019-1483.  Pending.

  • Principal counsel for appellant in In re. Polaris Innovations, Ltd., No. 2019-1484.  Pending.

  • Of counsel for appellant in Horizon Therapeutics, LLC v. Iancu, No. 2018-1225.

  • Of counsel for appellee in Par Pharm., Inc. v. Horizon Therapeutics, LLC, No. 2017-1451.  Court affirmed trial victory below under Rule 36.

  • Principal counsel for appellant/cross-appellee in PAVO Solutions LLC v. Kingston Tech. Co., Nos. 2016-2290, -2328, -2391. Convinced court to revise the Board’s interpretation of key claim language and to adopt the client’s interpretation rather than the opponent’s. The result was that the court affirmed all Board decisions upholding the client’s patent claims and the court reversed the appealed Board decisions holding certain claims unpatentable.

  • Principal counsel for appellee in VMware, Inc. v. Elecs. & Telecommc’ns Research Inst., Nos. 2016-1670, -1673. Settled after decision in case above.

  • Principal counsel for appellee in Dell Inc. v. Elecs. & Telecommc’ns Research Inst., No. 2015-1719. Court affirmed trial victory below under Rule 36.

  • Principal counsel for appellant in PLL Techs., Inc. v. Xilinx, Inc., No. 2016-2219.

  • Of counsel for appellant in Endotach LLC v. Medtronic, Inc., No. 2015-1784.

  • Principal counsel for appellant in Collectors Universe, Inc. v. Blake, No. 2015-1296.

  • Principal author of brief filed by amicus curiae Intellectual Ventures Management LLC in Marine Polymer Techs, Inc. v. Hemcon, Inc., 672 F.3d 1350 (Fed. Cir. 2012) (en banc). The court adopted the positions and largely followed the reasoning set forth in our brief that intervening rights in reexaminations and reviews should arise only for actual claim wording changes, not from mere arguments.

  • Principal counsel on appeal for appellee in Singhal v. Mentor Graphics, 2009 WL 1220786 (Fed. Cir. May 6, 2009) (nonprecedential). Represented owner of patent applications against former employee alleging to be inventor and owner of the patented technology. Part of team that obtained summary judgment on all inventorship and ownership claims in district court. Affirmed on appeal by unanimous opinion.

PATENT PROCUREMENT AND PORTFOLIO MANAGEMENT

  • For nearly 15 years, Mr. Phillips has led a team of 3–10 patent attorneys prosecuting patent applications for a large company that has employed as many as about 20 law firms as outside patent prosecution counsel. Phillips’ team has consistently been graded as the top firm or nearly the top firm for quality of work product during every grading period.

  • Matt also leads a team of 4–7 patent attorneys prosecuting patent applications for a large company that manufactures materials-handling vehicles.

  • Filed and successfully prosecuted over 20 reissue applications, including broadening reissue applications, reissue continuations, and patents that have been asserted in litigation.

  • Matt is experienced in handling appeals at the Patent Trial and Appeal Board (PTAB) of the PTO from final rejections by patent examiners. He has written the briefs and given the oral arguments in many such appeals.