Matthew A. Werber

My focus

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) proceedings before the Patent Trial and Appeal Board, Section 337 investigations before the United States International Trade Commission, and arbitration matters arising from a range of IP and complex commercial disputes. 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.

Representative experience

• Represent The Regents of the University of California in a groundbreaking patent enforcement campaign to protect its rights in a revolutionary new generation of light bulb technology known as filament LED that was invented by a Nobel laureate-led team at UC Santa Barbara. The campaign includes litigation before the U.S. International Trade Commission, the U.S. District Courts for the Central District of California and Eastern District of New York, and the Patent Trial and Appeal Board at the U.S. Patent and Trademark Office.
• 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 All allegations against client withdrawn on eve of trial.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.

Looking ahead

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.

Insights

• “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