PRACTICE AREAS


Matthew W. Siegal is a partner in Stroock's Intellectual Property Group. He concentrates his practice on extensive patent litigation, prosecution, opinion, licensing and due diligence for large multinational corporations, mid-size companies, start-ups, sole inventors and entrepreneurs.

Mr. Siegal has represented plaintiffs and defendants in patent infringement, design patent infringement, trade secret and fraudulent transfer litigation before federal courts, state courts and the International Trade Commission. His patent cases have involved sunscreens, cameras, sporting goods, nutritional supplements, pharmaceuticals, vehicle parts, high tech metals, polymer consumer products, liquid crystal displays, biotechnology and other areas.

Mr. Siegal has also prosecuted U.S. and worldwide patent applications in chemical, materials, biotechnical, electrical and mechanical fields. This has involved insecticides, adhesives, resins, food additives, ink cartridges, printers, watches, magnetic and optical recording media, polymers, fluid treatment systems, consumer health care products, pharmaceutical development and use, chemical-based products and catalysts. Mr. Siegal has also pursued appeals, inter partes reexaminations and ex parte reexaminations before the Patent Trial and Appeal Board.

Mr. Siegal's licensing activities have involved litigation settlements, university tech-transfer, technology in-licensing, technology out-licensing, employment agreements and antitrust analyses of licenses. He also prosecutes trademark and copyright applications and oppositions, and drafts and negotiates domestic and international license and settlement agreements.

In addition, Mr. Siegal has provided due diligence assistance in connection with asset purchases and financing, freedom-to-operate and third party infringement, strength of portfolio analyses and litigation outcome predictions.


REPRESENTATIVE MATTERS

  • Reagent Chemical & Research, Inc. v. Eurotarget S.R.L. et al., – Obtained a preliminary injunction, then a permanent injunction on behalf of Reagent Chemical in a patent infringement suit over trap and skeet targets.
  • Represented Fujifilm in its patent infringement suit against Jack C. Benun and the companies under his control for infringing patents related to single-use cameras.
    • Fujifilm v. Jazz – Obtained a $30 million jury verdict on behalf of Fujifilm.
    • Fujifilm v. Polytech – Obtained a preliminary injunction, a permanent injunction and a $16 million jury verdict on behalf of Fujifilm.
    • Fujifilm v. Benun – Obtained $6 million in damages, not dischargeable in Bankruptcy from the Bankruptcy Court on behalf of Fujifilm.
  • Fujifilm v. Yang – Obtained a $1 million jury verdict against Yang for the fraudulent transfer of assets owed due to a patent infringement settlement.
  • Fujifilm v. Achiever  – Represented Fujifilm in case concerning single-use cameras.  Obtained a favorable settlement.
  • Merck, Sharp and Doane and Bayer AG adv. L’Oreal – Represented Merck and Bayer and obtained a favorable settlement.
  • Rosco v. Velvac – Represented Rosco in its patent infringement suit against Velvac for infringement of a mirror mounting assembly patent. Obtained a favorable settlement.
  • Famosa v. Shockoe – Represented Famosa in its patent infringement suit against Shockoe for infringement of exercise ball chair patents. Obtained a favorable settlement.
  • Famosa v. Gaiam – Represented Famosa in its patent infringement suit against Gaiam for infringement of exercise ball chair patents. Case settled after obtaining summary judgment of infringement.
  • In re Lens-Fitted Film Packages – Represented Fujifilm before the U.S. International Trade Commission. Obtained a General Exclusion Order in the Initial Proceeding, Civil Penalties in the First Enforcement Proceeding, Civil Penalties in the Second Enforcement Proceeding and bond recovery in the Bond Forfeiture Proceeding.

MEMBERSHIPS

  • Member, New York Intellectual Property Law Association
  • Member, American Intellectual Property Law Association
  • Member, Licensing Executives Society
  • Member, Board of Editors, The Intellectual Property Strategist

SPEECHES & EVENTS

Mr. Siegal is a frequent speaker at industry conferences in the U.S. and Japan. Select engagements include:
 
  • 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, March 31-April 1, 2016
  • Speaker, "Enforcement & Monetization – Paper Tigers Beware!" The IP Monetization: New York 2015, New York, NY, September 24, 2015
  • Lecturer, "Recent Developments in U.S. Law Under Section 112," Ryuka Lecture Series, Tokyo, Japan, April 15, 2015
  • Lecturer, "Improving Quality and Reducing Fees in U.S. Patent Litigation, Ryuka Lecture Series," Tokyo Japan, November 13, 2013
  • Speaker, "Third-Party Challenges Under the America Invents Act: Litigation Strategies," BNA webinar, September 12, 2012
  • Lecturer, "Obtaining Patents that will Survive 35 U.S.C. § 101 in Light of Mayo Collaborative Services v. Prometheus Laboratories, Inc.," Ryuka Lecture Series, Tokyo, Japan, April 2012

PUBLICATIONS

Mr. Siegal is the author or co-author of numerous articles on a wide variety of intellectual property topics. Select publications include:
 
  • "Fed. Cir. Clarifies The Test For Patentable Subject Matter," Law360, August 2, 2016
  • Co-author, "Warsaw Orthopedic: Federal Circuit Applies a Reasonableness Standard to the Knowledge of Infringement Prong of Proving Inducement," The Intellectual Property Strategist, July 2016
  • Co-author, "Damages In Design Patent Infringement Cases," The Intellectual Property Strategist, November 2015
  • Co-author, "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
  • Co-author, "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
  • Co-author, "Apple v. Motorola: Damage Control (The Methodology in the Madness)," BNA's Patent, Trademark & Copyright Journal, June 6, 2014
  • Co-author, "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
  • Co-author, "In Myriad, Did Supreme Court Confuse Its Own Precedent?" IP Law360, August 5, 2013
  • Co-author, "Biosig Instruments, Inc. v. Nautilus, Inc.: Claim Language 'Spaced Relationship' Held Definite, Even If Based on Non-Quantifiable Functional Parameters," Intellectual Property Strategist, July 2013
  • "Technology: Can you learn to love a troll? A grim view of patent litigation," InsideCounsel, February 1, 2013
  • "Technology: Are you an Apple or a Samsung fan?" InsideCounsel, January 18, 2013
  • "Technology: Are gripes against software patents 'invalid'?" InsideCounsel, December 7, 2012
  • "Technology: The patent as a sword? No kidding!" InsideCounsel, November 23, 2012
  • "Potential New Barrier to Verdicts of Willful Infringement? Bard Peripheral Vascular, Inc. v. W.L. Gore & Assoc., Inc., 682 F.3d 1003 (Fed. Cir. 2012)," Intellectual Property Strategist, September 2012
  • Co-author, "The Saga of Omega v. Costco Wholesalers Corp.," The Intellectual Property Strategist, February 2012
  • "New Patent Practices for a New Millennium," International Association for the Protection of Intellectual Property of Japan, December 2011
  • "Federal Circuit Reaffirms a Strong Separate Written Description Requirement for Patent Claims," Bloomberg Law Reports – Intellectual Property, June 5, 2010
  • "Anti-Patent Trend May Be Shifting Back Toward Greater Protection," New York Law Journal, March 18, 2009
  • "Attacks on U.S. Patent System Threaten Growth of Green Economy," les Nouvelles, September 2008

ADMITTED TO PRACTICE

New York, 1988

U.S. District Court, Southern District of New York, 1988; U.S. District Court, Eastern District of New York, 1988; U.S. Court of Appeals, Federal Circuit, 1995; U.S. Court of International Trade, 2004; U.S. Supreme Court, 2010


PATENT ADMISSIONS

U.S. Patent and Trademark Office, 1988

EDUCATION

J.D., Fordham University School of Law, 1987

B.S., Cornell University, 1984; Chemical Engineering; Phi Beta Kappa

 

PUBLICATIONS

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