Matthew C. Phillips
Partner
Portland, OR
(503) 294-9851 Direct
(503) 220-2480 Fax

mcphillips@stoel.com

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Practice Areas

Industries

Technology

News

2/2/2012 - Federal Circuit Grants Rehearing in Patent Case with Potentially Far-Reaching Effects
6/17/2011 - Stoel Rives Earns Praise and National Recognition from Chambers USA
4/2/2010 - Stoel Rives Attorneys and Offices Rank High in 2010 Chambers Legal Guide
6/15/2009 - Stoel Rives Attorneys Earn High Marks and National Recognition from Chambers USA
12/31/2007 - Stoel Rives LLP Successfully Defends Targus Against Patent Infringement Claims Before the U.S. Court of Appeals for the Federal Circuit
12/31/2003 - Stoel Rives Portland Office Adds Nine Attorneys

Publications

1/1/2012 - Argument-Based Estoppel in Reexamination and Reissue (PDF)
12/9/2011 - Post-Grant Review Proceedings Compared with EPO Oppositions (PDF)
12/1/2011 - Post-Grant Review Proceedings Compared with EPO Oppositions (PDF)
11/1/2011 - Changes to Reexamination under the America Invents Act (PDF)
10/31/2011 - Patent Litigation Alert: Insights from Federal Circuit Judges
10/1/2011 - License and Settlement Agreements in Relation to Reexamination and Review Proceedings (PDF)
7/11/2011 - Amendment Rights in Reexamination (PDF)
6/10/2011 - Broadening Reissue: The Recapture Rule and Material Narrowing (PDF)
5/1/2011 - Patent Reexamination and Willful Infringement (PDF)
4/1/2011 - Broadening Reissue: The Recapture Rule and Surrendered Subject Matter (PDF)
11/29/2010 - Intellectual Property Law Alert: Supreme Court Grants Certiorari on Standard for Invalidating a Patent
11/1/2010 - The Presumption of Validity After Reexamination or Reissue (PDF)
10/1/2010 - Notice of Concurrent Proceedings in Reexamination and Reissue (PDF)
9/1/2010 - Requesting Inter Partes Reexamination (PDF)
8/20/2010 - Multiple Reexamination Requests (PDF)
7/30/2010 - Requesting Reexamination: Requirements and Best Practices (PDF)
6/30/2010 - Supplemental Examination Under the Patent Reform Act of 2010 (PDF)
5/31/2010 - Post-Grant Proceedings Under the Patent Reform Act of 2010 (PDF)
4/1/2010 - Substantial New Questions of Patentability (PDF)
3/1/2010 - The Proposed Post-Grant Review Proceedings and Reexamination (PDF)
2/1/2010 - Claim Changes in Reexamination and Reissue (PDF)
1/15/2010 - Post-Grant Patent Correction and Confirmation Options for Patent Owners
1/1/2010 - Post-Grant Options for Patent Owners (PDF)
12/1/2003 - Sales of Your Invention: When to File a Patent Application

Matthew C. Phillips

General

Litigation

Patents

Experience

Matt Phillips applies a multi-faceted perspective — gained through his experiences as a Federal Circuit law clerk, patent examiner, and systems engineer — to help clients with all their patent needs. Based on his experiences as a law clerk and patent examiner, Matt can look at patent prosecution and litigation issues from the perspective of the decision maker. From the vantage of a systems engineer, Matt seeks to fully understand the client's technology, objectives, opportunities, and risks. Matt's practice includes handling patent disputes; advising clients facing infringement risks; developing, managing, and exploiting patent portfolios; and preparing and prosecuting patent applications for complex electronics and computer inventions. Matt's patent dispute experience includes pre-litigation, district court litigation, Federal Circuit appeals, arbitration, mediation, and reexamination — on behalf of both patent owners and accused infringers.

Law clerk, United States Court of Appeals for the Federal Circuit, Washington, D.C., 2001-2003
Associate, Wilmer, Cutler & Pickering, Washington, D.C., 2000-2001
Patent agent, Dorsey & Whitney LLP, Washington, D.C., 1998-2000
Patent examiner, U.S. Patent and Trademark Office, 1995-1998
Systems engineer, Unisys Communication Systems Division, 1993-1995
Software engineer, Geneva Steel, 1992-1993

Recent Teaching and Speaking

Instructor, "Post-Grant Practice: Review, Reexamination, Reissue and Supplemental Examination"
(multi-day course), Patent Resources Group, 2012
Instructor, "Patent Reexamination and Reissue Practice" (multi-day course), Patent Resources Group, 2009-2011
Adjunct Professor, Patent Prosecution course, Lewis & Clark Law School, since 2010-2011
Moderator, Panel Discussion Featuring Eight Judges of the United States Court of Appeals for the Federal Circuit, October 2011
Panelist, Panel Discussion Featuring Circuit Judge William C. Bryson, 2011-12 Distinguished IP Visitor, Lewis & Clark Law School, October 2011
Post-Grant Aspects of Patent Reform, IPO Inter Partes Committee, May, 2011
"Oppositions, Reexaminations, and the Patent Reform Act of the Year: What Does the Out-of-Court Patent Battlefield of the Future Look Like?," AIPLA Mid-Winter Institute, Orlando, FL, Feb. 2010
"Patent Law Year (2010) in Review," Oregon State Bar, 2011
Panelist, "Reexamination Tips and Strategies - A Panel Discussion Featuring Gregory Morse, The Director Of The Central Reexamination Unit," Oregon Patent Law Ass'n, 2010
"Patent Law Year (2009) in Review," Oregon State Bar, 2010
"Overview of Patent Reexamination and Reissue," IP Section of the King County Bar Ass'n, 2010
"Post-Grant Practice Primer," Oregon Patent Law Ass'n, 2009
"Reexamination and Post-Grant Review Proceedings," Utah State Bar Intellectual Property Law Section meeting, 2009

Recent Publications

"Argument-Based Estoppel in Reexamination and Reissue" (coauthor), Intellectual Property Today, 8-9, Jan. 2012
"Post-Grant Review Proceedings Compared with EPO Oppositions" (coauthor), Intellectual Property Today, 32-35, Dec. 2011
"Changes to Reexamination under the America Invents Act" (coauthor), Intellectual Property Today, 22-23, Nov. 2011
"Patent Reexamination and Reissue Practice" (coauthor), (500+ page semi-annually updated treatise), Patent Resources Group, 2009-2010
"License and Settlement Agreements in Relation to Reexamination and Review Proceedings" (coauthor), Intellectual Property Today, 28-31, Oct. 2011
"Protests in Reissue Applications" (coauthor), Intellectual Property Today, 18-19, Sep. 2011
"Reexamination in Light of i4i and Therasense" (coauthor), Intellectual Property Today, 22-24, Aug. 2011
"Amendment Rights in Reexamination" (coauthor), Intellectual Property Today, 8-9, July 2011
"Broadening Reissue: The Recapture Rule and Material Narrowing" (coauthor), Intellectual Property Today, 14-16, June 2011
"Patent Reexamination and Willful Infringement" (coauthor), Intellectual Property Today, 14-15, May 2011
"Broadening Reissue: The Recapture Rule and Surrendered Subject Matter" (coauthor), Intellectual Property Today, 30-32, Apr. 2011
"Reexamination and Injunctive Relief" (coauthor), Intellectual Property Today, 28-29, Mar. 2011
"Reexam + Reissue = Merger, Suspension or Concurrent Prosecution" (coauthor), Intellectual Property Today, 14-16, Feb. 2011
"Do You Need Separate Reexamination Counsel?" (coauthor), Intellectual Property Today, 12-13, Jan. 2011
"Reexam + Reexam = Merger (Usually)" (coauthor), Intellectual Property Today, 20-21, Dec. 2010
"The Presumption of Validity after Reexamination or Reissue" (coauthor), Intellectual Property Today, at 30-31, Nov. 2010
"Notice of Concurrent Proceedings in Reexamination and Reissue" (coauthor), Intellectual Property Today, at 32-33, Oct. 2010
"Requesting Inter Partes Reexamination" (coauthor), Intellectual Property Today, at 12-13, Sept. 2010
"Multiple Reexamination Requests" (coauthor), Intellectual Property Today, at 8-9, Aug. 2010
"Requesting Reexamination: Requirements and Best Practices" (coauthor), Intellectual Property Today, at 26-27, July 2010
"Supplemental Examination Under the Patent Reform Act of 2010" (coauthor), Intellectual Property Today, at 8-9, June 2010
"Post-Grant Proceedings Under the Patent Reform Act of 2010" (coauthor), Intellectual Property Today, at 18-20, May 2010
"Substantial New Questions of Patentability" (coauthor), Intellectual Property Today, at 34-35, Apr. 2010
"Proposed Post-Grant Review Proceedings and Reexaminations" (coauthor), Intellectual Property Today, at 14-16, Mar. 2010
"Claim Changes in Reexamination and Reissue" (coauthor), Intellectual Property Today, at 24-26, Feb. 2010
"Post-Grant Options for Patent Owners" (coauthor), Intellectual Property Today, at 20-23, Jan. 2010

Representative Litigation Matters

Matt is experienced in developing and advocating positions on issues of claim construction, infringement, validity, inventorship and other technical issues. Matt is typically the lead strategist and advocate on such issues. Matt's dispute experience includes federal district court litigation, mediation, arbitration, and Federal Circuit appeals. In his last Federal Circuit appeal, Matt was lead counsel obtaining a unanimous affirmance of a district court's summary judgment in the client's favor. Matt's patent dispute experience regularly entails consideration of reexamination and reissue proceedings at the U.S. Patent and Trademark Office as options for patent owners and challengers. For a list of representative patent litigation matters, click here.

Representative Patents and Published Patent Applications

Matt drafts and prosecutes patent applications for high-value electronics and computer-related inventions. Matt's advanced engineering education and real-world engineering experience make him adept at working with complex inventions in sophisticated technologies. Matt has been drafting and prosecuting patent applications since 1998. Before then, he was a patent examiner at the U.S. Patent and Trademark Office, where he issued almost a hundred patents, mainly in the area of multiplex communications. Matt's patent drafting and prosecution are informed both by his insider perspective from his time as an examiner and by his litigation experience enforcing patents and defending asserted patent enforcements in court. For a list of representative patents and published patent applications, click here.

Honors and Awards

Selected as one of "America's Leading Lawyers for Business" (Oregon) by Chambers USA (currently: Intellectual Property), 2009-2011
Selected as a "Rising Star" (Intellectual Property Litigation; Oregon) by Super Lawyers, 2010-2011
2011 Pro Bono Advocacy Award, Federal Circuit Bar Association

Professional Activities

Oregon Patent Law Association, President 2007, Director 2003-present
Federal Circuit Bar Association
Intellectual Property Owners
American Intellectual Property Law Association
American Bar Association (Chair of Ex Parte Subcommittee of Committee 104 (Post Grant & Inter Partes Patent Office Practice))
Institute of Electrical & Electronics Engineers

Education

Georgetown University Law Center, Juris Doctor, cum laude, 2000
University of Utah, Degree of Elec. Eng'g (doctorate), 1995
University of Utah, Master of Science, Elec. Eng'g, 1995
University of Utah, Bachelor of Science, Elec. Eng'g, cum laude, 1991

Admissions

Oregon
Virginia (inactive)
District of Columbia (inactive)
U.S. Patent and Trademark Office
U.S. Court of Appeals, Federal Circuit
U.S. Court of Appeals, Fourth Circuit

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Representative Litigation Matters

Castlen Optometrics, LLC* v. Essilor Int'l, S.A., et al., No. 2:11-cv-387 (E.D. Tex.) - Representing owner of patent. Pending.
Resonant Biotechnologies, LLC* v. SRU Biosystems, Inc., et al., No. 3:11-cv-04570 (D. N.J.) - Representing owner of patent. Pending.
Resonant Biotechnologies, LLC* v. Corning Inc., et al., No. 1:11-cv-00303-SLR (D. Del.) - Representing owner of patent. Pending.
Mayfair Wireless, LLC v. Cisco Systems, Inc., et al.*, No. 10-cv-1102 (D. Del.) - Represented one of several defendants who filed a motion to dismiss, prompting the plaintiff to voluntarily dismiss the case.
Patent Group, LLC v. Bondhus Corp.*, No. 2:10-cv-312 (E.D. Tex.) - Represented company accused of false patent marking. Settled.
Leupold & Stevens, Inc.* v. Bushnell Inc., et al., No. 10-CV-104-HU (D. Or.) - Represented patent owner in infringement case involving laser rangefinders. Settled under confidential terms.
Bushnell Inc. v. Leupold & Stevens, Inc.* No. 2:10-cv-02081 (D. Ks.) - Represented company accused of infringing three patents for laser rangefinding technology. Settled under confidential terms.
Patect, LLC v. Champion Discs, Inc.,* No. 5:10-cv-00073-DF-CMC (E.D. Tex.) - Represented company accused of false patent marking. Settled.
Direct Route, LLC. v. Onoffline, Inc., et al.,* No. 09-CV-1509 (W.D. Wash.) - Representing defendants accused of infringing patent for tunnel-based computer networking technology. Requested multiple reexaminations of the asserted patent and obtained a stay of the litigation.
Peavey Electronics Corp. v. Behringer, Int'l GmHb., et al.,* No. 2:09-cv-00918 (D. N.J.) - Represented defendant accused of infringing utility patent for graphic equalizer circuitry, design patent for guitar headstock, and trademark in guitar headstock design. Led claim construction efforts, which resulted in a favorable ruling. Pending.
Quito Enterprises v. Netflix, Inc., et al.,* No. 08-23543 (S.D. Fla.) - Represented Strands, Inc., one of several defendants, in patent infringement case involving browser software technology. Settled under confidential terms.
602531 British Columbia Ltd. v. Mercedes-Benz USA, LLC,* No. 08-0815-PK (D. Or.) - Co-counsel for defendant in patent infringement case involving vehicle GPS units. Helped obtain transfer of case to district where client is headquartered.
Singhal v. Mentor Graphics,* No. 07-15870JL (N.D. Cal.) - Represented owner of patent applications against former employee alleging to be inventor and owner of the patented technology. Obtained summary judgment on all inventorship and ownership claims. Affirmed on appeal. 2009 WL 1220786 (Fed. Cir. May 6, 2009).
Park City Group, Inc.* v. Workbrain, Inc., No. 2:06cv00289 TC (D. Utah) - Represented owner of patent for staff scheduling invention. Settled under confidential terms.
Spectra-Physics, Inc.* v. IPG Photonics Corp., No. C-06-3953-JF (N.D. Cal.) - Represented owner of patent for a fiber laser. Settled under confidential terms.
Behringer Int'l GmbH* v. Loud Tech., Inc. (arbitration) - Represented defendant accused of infringing a design patent for a speaker. Settled under confidential terms.
Park City Group, Inc.* v. 360Commerce, Inc., No. 2:06cv00123 TC (D. Utah) - Represented owner of patent for staff scheduling invention. Settled under confidential terms.
Spadafora* v. Paradigm Med. Indus. Inc., No. 2:05cv00278 (D. Utah) - Represented plaintiff in suit concerning patent for ophthalmological laser surgery equipment. Settled under confidential terms.
Atlantic Construction Fabrics, Inc. v. Metrochem, Inc.,* No. 03CV5645-FDB (W.D. Wash.) - Represented defendant accused of infringing a patent for a storm drain filter. Requested reexamination of the patent, resulting in narrowing amendments to all asserted claims. Obtained summary judgment of no liability prior to reexamination and intervening rights thereafter. Remainder of case settled under confidential terms.
Sharper Image Corp. v. Indoor Purification Systems, Inc.,* No. 03-4426CW (N.D. Cal.) - Represented defendant accused of infringing a patent for a ionic air purifier. Obtained summary judgment of invalidity and non-infringement (373 F. Supp. 2d 993 (2005)).
Sharper Image Corp. v. Shanghai NeoTec Co.,* No. 05-1806CW (N.D. Cal.) - Represented defendant accused of infringing a design patent for a plug-in air purifier and nightlight. Case settled with client taking a royalty-free license.
Numark Indus., LLC v. Behringer Holdings, Ltd.,* No. 03-4775 (D.R.I.) - Represented defendant accused of infringing a patent for an electronic musical beat counter. Settled under confidential terms.
Case name and data withheld - Provided opinions of counsel regarding validity, enforceability, and infringement of electronics patents that were the subject of a multi-patent infringement lawsuit.

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Representative Patents and Published Patent Applications

US 8,072,587 B2 Machine and Method for Measuring a Characteristic of an Optical Signal
US 8,049,135 B2 Systems and Methods for Alignment of Laser Beam(s) for Semiconductor Link Processing
US 7,964,819 Methods And Systems For Positioning A Laser Beam Spot Relative To A Semiconductor Integrated Circuit Using A Processing Target As A Metrology Target
US 7,935,941 Semiconductor Structure Processing Using Multiple Laterally Spaced Laser Beam Spots Spaced On Axis On Non-Adjacent Structures
US 7,923,306 Semiconductor Structure Processing Using Multiple Laser Beam Spots Spaced On-Axis To Increase Single-Blow Throughput
US 7,687,740 Semiconductor Structure Processing Using Multiple Laterally Spaced Laser Beam Spots Delivering Multiple Blows
US 7,633,034 Semiconductor Structure Processing Using Multiple Laser Beam Spots Overlapping Lengthwise on a Structure
US 7,629,234 B2 Semiconductor Structure Processing Using Multiple Laterally Spaced Laser Beam Spots with Joint Velocity Profiling
US 7,627,171 B2 Methods and Systems for Detecting Objects of Interest in Spatio-Temporal Signals
US 7,506,816 System and Method for Determining a Threshold for Edge Detection Based on an Undifferentiated Equalized Scan Line Signal
US 7,435,927 Semiconductor Link Processing Using Multiple Laterally Spaced Laser Beam Spots with On-Axis Offseat
US 7,425,471 Semiconductor Structure Processing Using Multiple Laser Beam Spots Spaced On-Axis with Cross-Axis Offset
US 7,383,994 Methods and Systems for Forming Images of Moving Optical Codes
US 7,376,525 Apparatus and Method for Estimation of Initial Phase of a Brushless Motor
US 7,372,878 Method And System for Preventing Excessive Energy Build-Up in a Laser Cavity
US 7,358,976 Methods for Processing Color Image Data Employing a Chroma, Hue, and Intensity Color Representation
US 7,315,038 Methods and Systems for Positioning a Laser Beam Spot Relative to a Semiconductor Integrated Circuit Using a Processing Target as an Alignment Target
US 7,307,675 Display Panel with Backlighting Structure and Selectively Transmissive Window Therethrough
US 7,297,972 Methods and Systems for Positioning a Laser Beam Spot Relative to a Semiconductor Integrated Circuit Using a Processing Target as a Metrology Target
US 7,278,158 B2 Method and System for Shadowing Accesses to Removable Medium Storage Devices
US 7,227,098 Method and System for Decreasing the Effective Pulse Repetition Frequency of a Laser
US 7,215,493 Imaging System with a Lens Having Increased Light Collection Efficiency and a Deblurring Equalizer
US 7,227,098 System Circuit, and Method for Edge Detection in a Binary Optical Code
US 7,173,432 Method and Machine for Repetitive Testing of an Electrical Component
US 7,050,956 Method and Apparatus for Morphological Modeling of Complex Systems to Predict Performance
US 7,002,682 Method and Apparatus for Operating a Laser in an Extinction-Type Optical Particle Detector
US 6,957,416 Document Builder Classes and Methods
US 6,925,555 System and Method for Determining a Plurality of Clock Delay Values Using an Optimization Algorithm
US 6,782,471 Management of a Device Based on Monitoring During an Inactive State
US 6,622,284 Method and Apparatus for Detection of Errors in One-Hot Words
US 6,535,989 Input Clock Delayed by a Plurality of Elements that are Connected to Logic Circuitry to Produce a Clock Frequency Having a Rational Multiple Less than One
US 6,487,550 Method and Apparatus for Finding a First Element
US 6,434,060 Write Pulse Limiting for WORM Storage Device
US 6,434,048 Pulse Train Writing of WORM Storage Device
US 6,408,343 Apparatus and Method for Failover Detection
US 6,314,039 Characterization of Sense Amplifiers
US 6,275,442 Address Decoder and Method for its Accelerated Stress Testing
US 2009/0292750 A1 Methods for Automatic Accuracy-Sustaining Scaling of Block-Floating-Point Operands
US 2009/0235170 A1 Methods and Apparatus for Sharing a Computer Display Screen or a Media File and Selecting Therebetween
US 2009/0234983 A1 Methods and Apparatus for Sharing a Computer Display Screen
US 2009/0206161 A1 Systems and Methods for Forming a Composite Image of Multiple Portions of an Object from Multiple Perspectives
US 2006/0208893 Weight Audit Methods and Systems Utilizing Data Reader
US 2006/0164541 Rolling-Reset Imager with Optical Filter
US 2006/0005424 Bonding of an Upper and a Shell in a Shoe
US 2005/0282407 Semiconductor Structure Processing Using Multiple Laser Beam Spots Spaced On-Axis Delivered Simultaneously
WO 01/90912 Enhanced Downloading from a Computer Network and Profiling of a User of a Computer Network

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