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Matthew A. Werber



Matt Werber helps clients with matters related to intellectual property litigation, including patents, trademarks, copyrights and trade secrets.

What do you focus on?

I have litigated cases involving a wide range of technologies, including enterprise software, cybersecurity, ecommerce, semiconductor mechanics, mechanical devices, medical devices, electronic components and water treatment systems, among many others. My litigation experience extends to federal jury trials and appeals, inter partes review (IPR) and covered business method (CBM) proceedings before the Patent Trial and Appeal Board, and Section 337 investigations before the United States International Trade Commission. I also represent and advise clients in litigation and non-litigation matters concerning source code and enterprise software installation.

I also regularly counsel enterprises large and small on overall patent and IP portfolio strategies and bring significant experience preparing applications and other Patent Office filings. I recently helped a client revise its overall patent prosecution strategy to better align with the client’s business goals and to put it in the best position for continued growth.

What do you see on the horizon?

Recent patent-friendly decisions emerging from the Federal Circuit have questioned the usefulness of early Section 101 eligibility challenges. Accordingly, we will likely see software and business method patent cases making a comeback as patentees anticipate a greater likelihood their cases will survive the pleadings stage.

Publications and Presentations

  • “The Return of Patent Opinion Letters,” Law360, January 2017
  • “Just the Facts: Supreme Court Takes Aim at Treatment of Fact Questions in Two IP Decisions,” IP Litigator, March/April 2015

Representative Litigation Experience

  • Successfully represented Kingston Technology in an ITC Section 337 patent infringement and importation investigation related to embedded firmware and imported USB flash drives. All allegations against client withdrawn on eve of trial.
  • Successfully represented ProMOS and Kingston Technology in an ITC Section 337 patent infringement and importation investigation related to packaged DRAM chips and memory cards. Initial and final determinations granted in favor of clients. Determinations affirmed by Federal Circuit on appeal. Cert Petition denied in client's favor.
  • Represented Digital Design Corporation in litigating allegations of trade secret misappropriation and violations of anti-circumvention and anti-trafficking provisions of the Digital Millennium Copyright Act (DMCA) involving embedded firmware, audio speakers, public address systems and corresponding hardware components. Reached a favorable resolution after a two-week jury trial.
  • Defended Taiwan-based ChipMOS Technologies against patent infringement allegations involving semiconductor chip packaging technology. A favorable outcome was reached shortly after the exchange of expert reports.
  • Defended HSN, Inc., an interactive multichannel retailer with a direct-to-consumer focus, against allegations of patent infringement involving e-commerce online shopping cart technology. All claims against the client were defeated on summary judgment.
  • Defended four nationally recognized retailers against patent infringement allegations involving online interactive mapping services. A favorable resolution was reached after a partial summary judgment was granted in clients’ favor.

PTAB rejects CBM challenges to profit measurement patents

Law360 | May 31, 2019

This article mentions Chicago Intellectual Property counsel Matt Werber and Los Angeles Intellectual Property partner Jennifer Hayes for their representation of B*IEOR in a matter before the Patent Trial and Appeal Board.

Contact

Matthew A. Werber

Counsel

Chicago

Phone: 312-977-4458


Fax: 866-568-1033

Chicago-Kent College of Law, Illinois Institute of Technology, J.D.

University of Michigan, B.S., Engineering

Illinois

U.S. Court of Appeals, Federal Circuit

U.S. District Court, Eastern District of Washington

U.S. District Court, Northern District of Illinois

U.S. District Court, Western District of Michigan

U.S. Patent and Trademark Office

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