Matthew Siegal has over 30 years of experience helping his clients turn their ideas into assets. He is formerly a partner at Stroock & Stroock & Lavan in New York City, where he obtained patents and resolved patent infringement disputes for entrepreneurs, medium-size companies and multinational corporations. He successfully litigated patent infringement disputes in Federal District and Appellate Court and the U.S. International Trade Commission. Matt uses his considerable experience regarding patent enforcement and litigation to ensure the patents he writes for his clients are not only able to obtain allowance in the Patent Office, but also to be upheld in Federal Court. In addition to drafting and prosecuting patent applications, Matt advises clients regarding the likely outcomes of patent disputes. He is experienced in all phases of IP due diligence, freedom to operate and infringement opinions, licensing, trademark prosecution, mediation and arbitration of commercial disputes. Matt’s licensing activities have involved litigation settlements, university tech-transfer, technology in-licensing, technology out-licensing, employment agreements and antitrust analyses of licenses. He is a prolific author and speaker, domestically and internationally, on a wide variety of intellectual property topics and is frequently asked for his insight by leading IP publications, having been quoted over a dozen times in recent years.
Accomplishments
- Prepared, filed, and prosecuted hundreds of patent applications
- Helped clients develop IP strategies including creative ways of using cross licensing and implied license law to overcome prohibitions against anti-competitive behavior
- Obtained a preliminary injunction and permanent injunction in a patent infringement suit over a patent he wrote and prosecuted.
- Obtained multiple multi-million dollar patent judgments and injunctions.
- Performed freedom-to-operate and strength of portfolio analyses in connection with new products and business acquisitions.
- Recognized as 2017 Super Lawyer in Intellectual Property
Technology Areas
Matt’s fields of technology include chemical, life sciences, mechanical, electrical, consumer products, manufacturing and computer catalysis, printer cartridges, polyurethanes, adhesives and resins, specialty chemicals, flavor & fragrance compositions, insecticides, LED and LCD technology, semiconductors, magnetic and optical storage media.
Selected Patents, Patent Applications & Publications
- “Examining Exergen for Patent Eligibility Clues”, IP360, (March 27, 2018)
- “Even the Value of The Smallest Salable Unit Must be Apportioned, Finjan v. Blue Coat Sys., Inc.” Intellectual Property Strategist, Vol. 24, No. 6 (March 2018)
- Panelist, “U.S. Patent Law: Recent Developments,” Fordham Intellectual Property Law and Policy Conference, New York, NY, 2018
- Panelist, “Patent Trolls and Copyright Mass Filers,”
Fordham University, New York, NY 2017 - Panelist, “U.S. Patent Law: Recent Developments,” Fordham Intellectual Property Law and Policy Conference, New York, NY, 2017
- “Fed. Cir. Clarifies the Test for Patentable Subject Matter,” Law360, August 2, 2016
- “Warsaw Orthopedic: Federal Circuit Applies a Reasonableness Standard to the Knowledge of Infringement Prong of Proving Inducement,” The Intellectual Property Strategist, July 2016
- Moderator, “The Madness in the Method: Valuing, Enforcing and Drafting Method Claims in Light of Recent Decisions,” Centerforce’s 5th Annual IP Strategy Summit, New York, NY, October 27, 2016
- Panelist, “U.S. Patent Law: Recent Developments,” Fordham Intellectual Property Law and Policy Conference, New York, NY, 2016
- “Damages in Design Patent Infringement Cases,” The Intellectual Property Strategist, November 2015
- “Apple’s iPhone User Interface Held Functional for Trade Dress Infringement, But Not Design Patent Purposes,” The Intellectual Property Strategist, July 2015
- “No Direct Infringement Unless A ‘Single Entity’ Performs Each and Every Method Step: Akamai Technology, Inc. v. Limelight Networks, Inc.,” The Intellectual Property Strategist, July 2015
- “Federal Circuit Tackles RAND Royalty Rates,” The Intellectual Property Strategist, January 2015
- “Fed. Cir. Intel Case Shows Perils of Co-Owning Patent,” IP Law360, September 25, 2014
- “Apple v. Motorola: Damage Control (The Methodology in the Madness),” BNA’s Patent, Trademark & Copyright Journal, June 6, 2014
- “Gilead Sciences, Inc. v. Natco Pharma Ltd.: Patent Owner’s and Same Inventor’s Later-Issued Patent Invalidates Prior Patent,” Intellectual Property Strategist, June 1, 2014
- “In Myriad, Did Supreme Court Confuse Its Own Precedent?” IP Law360, August 5, 2013
- “Biosig Instruments, Inc. v. Nautilus, Inc.: Claim Language ‘Spaced Relationship’ Held Definite, Even If Based on Non-Quantifiable Functional Parameters,” IP Strategist, July 2013