Matthew C. Phillips Resume - Stoel Rives LLP Attorneys at Law

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

Professional Honors and Activities

Selected as one of "America's Leading Lawyers for Business" (Oregon) by Chambers USA (Intellectual Property), 2009

Teaching and Speaking

Instructor, "Patent Reexamination and Reissue Practice" (multi-day course), Patent Resources Group
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
Guest lecturer, "Appeals," Patent Litigation course at Lewis & Clark Law School, 2006
"PTO's Proposed Rule Changes," various sites, 2006
"The Entrepreneur and the Law of IP," InnoTech Business & Technology Innovation Conference, 2006
"Building a Valuable IP Portfolio," InnoTech Business & Technology Innovation Conference, 2005, and Micro Nano Breakthrough Conference, 2005
"Practice Before the Federal Circuit," Oregon Patent Law Association meeting, 2004, and IP Section of Utah State Bar meeting, 2003

Publications

Co-author, "Patent Reexamination and Reissue Practice," (500+ page semi-annually updated treatise), Patent Resources Group, 2009-2010
Co-author, "Substantial New Questions of Patentability," Intellectual Property Today, at 34-35, Apr. 2010
Co-author, "Proposed Post-Grant Review Proceedings and Reexaminations," Intellectual Property Today, at 14-16, Mar. 2010
Co-author, "Claim Changes in Reexamination and Reissue," Intellectual Property Today, at 24-26, Feb. 2010
Co-author, "Post-Grant Options for Patent Owners," Intellectual Property Today, at 20-23, Jan. 2010
Contributing blogger, "Oregon Patent Litigation Tracker" Blog, http://www.oregonpatentlitigation.com/
"Taking a Step Beyond Maxwell to Tame the Doctrine of Equivalents," 11 Fordham Intellectual Property, Media and Entertainment Law Journal 155, 2000

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 advanced 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 experience enforcing and defending asserted enforcements of patents in litigation. For a list of representative patents and published patent applications, click here.

Professional Honors & Activities

Selected as one of "America's Leading Lawyers for Business" (Oregon) by Chambers USA (currently: Intellectual Property), 2010
Oregon Patent Law Association, President 2007, Director 2003-2009
Federal Circuit Bar Association
Intellectual Property Owners
American Intellectual Property Law Association
American Bar Association
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

Leupold & Stevens, Inc.* v. Bushnell Inc., et al., No. 10-CV-104-HU (D. Or.) - Representing patent owner in infringement case involving laser rangefinders. Pending.
Bushnell Inc. v. Leupold & Stevens, Inc.* No. 2:10-cv-02081 (D. Ks.) - Representing company accused of infringing three patents for laser rangefinding technology. Pending.
Patect, LLC v. Champion Discs, Inc.,* No. 5:10-cv-00073-DF-CMC (E.D. Tex.) - Representing company accused of false patent marking. Pending.
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 reexamination 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.) - Representing defendant accused of infringing utility patent for graphic equalizer circuitry, design patent for guitar headstock, and trademark in guitar headstock design. Pending.
Quito Enterprises v. Netflix, Inc., et al.,* No. 08-23543 (S.D. Fla.) - Representing 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.) - Representing 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 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
US 2005/0282406 Semiconductor Structure Processing Using Multiple Laterally Spaced Laser Beam Spots Delivering Multiple Blows
US 2005/0282367 Semiconductor Structure Processing Using Multiple Laser Beam Spots Spaced On-Axis on Non-Adjacent Structures
US 2005/0282319 Semiconductor Structure Processing Using Multiple Laser Beam Spots Overlapping Lengthwise on a Structure
US 2005/0279739 Semiconductor Structure Processing Using Multiple Laser Beam Spots Spaced On-Axis to Increase Single Blow Throughput
WO 01/90912 Enhanced Downloading from a Computer Network and Profiling of a User of a Computer Network

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