Experience

Matthew Thayne is a partner of Stoel Rives' Technology and Intellectual Property practice group. His practice focuses primarily on patents, including preparing and prosecuting patent applications, assisting clients with navigating patent minefields to avoid patent disputes, and resolving patent disputes, including enforcing the rights of patent-holders and defending against charges of infringement.

Matt prepares and prosecutes both U.S. and foreign patent applications in various technological fields, including medical devices, software, business methods, lasers, optical systems, communication systems, and other mechanical and electrical devices and systems.

He also has extensive experience counseling clients and providing written opinions and analysis regarding patent matters, including product clearance, product design-arounds, patentability, patent validity, patent enforceability, and patent infringement.

In addition to assisting clients in resolving pre-litigation disputes involving patents, Matt litigates patent disputes, along with other intellectual property disputes, in federal court and handles patent appeals before the U.S. Court of Appeals for the Federal Circuit.

Matt's practice further extends to obtaining, protecting, and enforcing trademarks and other intellectual property assets.

Representative Work

Representative Litigation Matters (* = client) and Other Dispute Work

• Comfort Strapp v. Targus, Inc.* (C.D. Cal. and Fed. Cir.)
  Represented defendant against infringement claims based on components of client's laptop computer bags. Obtained summary judgment for client of non-infringement. Also represented Targus in Comfort Strapp's appeal to the U.S. Court of Appeals for the Federal Circuit. Achieved victory for client on appeal, with the Federal Circuit panel unanimously affirming the district court's summary judgment ruling.
• Application Development Consultants, Inc. v. Park City Group, Inc.* (M.D. Fla.)
  Represented patent owner and defendant to declaratory judgment action. Successfully obtained dismissal of the action in favor of a co-pending action in the U.S. District Court for the District of Utah.
• Sharper Image Corp. v. Indoor Purification Systems, Inc.* (N.D. Cal.)
  Represented defendant accused of infringing a patent for an ionic air purifier. Obtained summary judgment for client of invalidity and non-infringement (373 F. Supp. 2d 993 (2005)).
• LG Philips LCD Co. v. ViewSonic Corporation*, et al. (D. Del.)
  Represented defendant accused of infringing several patents relating to flat panel televisions. Filed for a stay of the litigation and dismissal of certain claims, after which the case was settled favorably for our client under confidential terms.
• Sharper Image Corp. v. Shanghai NeoTec Co.* (N.D. Cal.)
  Represented defendant accused of infringing a design patent for a plug-in air purifier. Case settled with client taking a royalty-free license.
• Rates Technology Inc. v. Simpligent, LLC* (E.D.N.Y.)
  Represented defendant accused of infringing a patent for PBX telephone systems with voice-over IP technology. Successfully put the plaintiff's patent in reexamination and quickly thereafter achieved a favorable settlement for the client.
• VDF FutureCeuticals, Inc. v. O.N.E. World Enterprises* (D. Minn.)
  Represented defendant accused of infringing trademarks for nutritional beverage products. Filed for dismissal of certain claims, after which the case was settled favorably for our client under confidential terms.
• Liechty v. New Archery Products*, Barrie Archery, LLC*, et al. (D. Utah)
  Represented multiple defendants accused of infringing a patent for arrowheads. Successfully defended against a motion for a temporary restraining order, after which the case was settled favorably for our clients under confidential terms.
• Iomed, Inc. v. Ceramatec, Inc.*, et al. (D. Utah)
  Represented defendant accused of misappropriating trade secrets relating to iontophoretic patches. Settled favorably for our client under confidential terms.
• Prepared several successful ex parte reexamination requests resulting in partial or full invalidation of patents that had previously been asserted against, or used to threaten, clients.

Representative Client Counseling and Opinion Work

• Assisted a medical device company with achieving patent clearance for products in new product lines, including dozens of new products. Clearance services included assistance in designing proposed products around problematic patents, as well as drafting numerous patent opinions of non-infringement, invalidity, unenforceability, and clearance.
• Has authored dozens of patent opinions, including invalidity, validity, non-infringement, infringement, unenforceability, and product clearance opinions in a variety of technical fields, including software, electrical and hardware devices, medical devices, outdoor recreation products, and plastic films and packaging.
• Led the intellectual property side of a due diligence investigation associated with a large transaction.
• Regularly performs patent due diligence on target companies of angel investment groups.

Representative Patent Procurement and Portfolio Management Work

• Has prepared and/or prosecuted over 100 patent applications in a variety of technical fields, including medical devices, software, business methods, lasers, optical systems, communication systems, and other mechanical and electrical devices and systems.
• Manages the entire patent portfolios of several companies.

Professional Honors & Activities

• Voted by his peers as one of Utah's "Legal Elite" for intellectual property law (as published in Utah Business magazine)
• Recognized as a "Rising Star" among intellectual property attorneys by Mountain States Super Lawyers magazine
• Member, Intellectual Property Section of the Utah State Bar
• Member, American Intellectual Property Law Association

Presentations

• "Patent Opinions: The Who, What, Why, When, and How," Intellectual Property Seminar Series (2007)

Civic Activities

• Pro Bono Counsel, The Library Square Foundation for Art, Culture and Science (aka "The Leonardo")
• Pro Bono Counsel, Utah Science Center

Prior Legal Experience

• Summer associate, Workman, Nydegger & Seeley, Salt Lake City, Utah (2001)
• Summer associate, Lyon & Lyon, L.L.P., Irvine, California (2001)
• Summer associate, Brown & Bain, P.A., Phoenix, Arizona (2000)

Publications

• "What Every Business Executive and In-House Attorney Should Know About Obtaining and Using Patent Opinions," Intellectual Property Today, June 2009
• "Taming the Patent Trolls: Tactics for Dealing with a Growing Epidemic," The Enterprise, June 9-15, 2008 and Utah Business magazine, Oct. 2008
• "Patent Infringement Cease-and-Desist Letters: The Actual Notice/Actual Controversy Dichotomy," Intellectual Property Today, June 2005
• "Obtaining and Maintaining State Trademarks in Utah," Utah Bar Journal, Nov. 2003
• "Business Method Patents, Franchises, and the First Inventor Defense Act: Something Must Give," Utah Law Review, 2001

Education

• University of Utah College of Law, J.D., 2002, Order of the Coif
  Articles Editor, Utah Law Review, 2001-02
• University of Utah, B.S., 1999, summa cum laude, Physics with Mathematics minor

Admissions

• State Bar of Utah
• U.S. District Court for the District of Utah
• U.S. Court of Appeals for the Federal Circuit
• U.S. Patent & Trademark Office

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