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Matthew Siegal

PARTNER, NEW YORK



Matthew W. Siegal, a partner in Stroock's Intellectual Property Group, concentrates his practice on extensive patent litigation, prosecution, opinion, licensing and due diligence activities for both large multi-national corporations and smaller start-ups.

His litigation practice has involved all aspects of discovery, pre-trial, trial and appeal before federal courts, state courts and the International Trade Commission. His patent cases have involved cameras, inks, pharmaceuticals, high tech metals, polymer consumer products, liquid crystal displays, biotechnology and other areas.

Mr. Siegal’s patent prosecution experience includes the prosecution of U.S. and worldwide patent applications in chemical, materials, biotechnical, electrical and mechanical fields, involving the areas of insecticides, adhesives and resins, ink cartridges and printers, magnetic and optical recording media, polymers, fluid treatment systems, consumer health care products, pharmaceutical development and use, chemical based products, imaging materials, and catalysts.

Mr. Siegal has also provided due diligence assistance in connection with asset purchases, sales, financing and underwriting. He also prosecutes trademark and copyright applications; participates in trademark opposition proceedings; drafts and negotiates domestic and international license and settlement agreements and performs intellectual property due diligence. He has published articles and lectured internationally on a wide variety of intellectual property topics such as on pharmaceutical and biotech patent litigation.

Mr. Siegal was an integral member of a trial team that waged a campaign against various camera manufacturers and distributors that infringed FUJIFILM Corporation’s one-time-use camera patents. This included numerous hearings before the International Trade Commission, two jury trials in the District of New Jersey, hearings in the New Jersey bankruptcy courts and a state court fraudulent transfer action. The successful result of this campaign has been an ITC general exclusion order, prohibiting the importation of infringing cameras, two large patent infringement jury verdicts, a ruling exempting an infringer’s debt from discharge through bankruptcy and a successful licensing program. Mr. Siegal has been involved in numerous other jury and bench trials and hearings involving all aspects of intellectual property law.

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
  • Member, Board of Editors, Patent Strategy & Management
Activities
Speeches and Events
  • Speaker, "Improving Quality and Reducing Fees in U.S. Patent Litigation, Ryuka Lecture Series," Tokyo Japan, November 13, 2013
  • Lecturer, "Third Party Contested Cases under the America Invents Act," Ryuka Lecture Series, Tokyo, Japan, October 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
  • Speaker, "Third-Party Challenges Under the America Invents Act: Litigation Strategies," BNA webinar, September 12, 2012
  • Lecturer and Panel Leader, Law Journal Seminars
  • Lecturer and Panel Leader, New York Biotechnology Association Annual Meeting, January 2008
  • Speaker, "Ethics For IP Attorneys," Incisive Media, November 19, 2008
  • Lecturer, "FDA Bootcamp," American Conference Institute, San Francisco, CA, September 18, 2007
  • Lecturer, "23rd Annual Joint Patent Practice Seminar," Joint Patent Practice Continuing Legal Education, New York, NY, May 9, 2007
  • Lecturer, "Life Sciences IP Due Diligence for Buyers Best Practices Forum," American Conference Institute, New York, NY, April 12, 2007
  • Lecturer, "Program on the Duty of Disclosure Owed the U.S. Patent & Trademark Office," New York Intellectual Property Law Association, New York, NY, May 20, 2005
  • Lecturer, National Forum on Preventing and Defending Pharmaceutical and Biotech Patent Litigation, Washington, DC, February 2-4, 2005
  • Lecturer, "Forum Selection for U.S. Patent Disputes," International Association for the Protection of Intellectual Property (AIPPI), Japan, February 13, 2004
Publications
Mr. Siegal is the author of the Technology column for InsideCounsel. Other publications include:
  • 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
  • Co-author, "New Patent Practices for a New Millennium," International Association for the Protection of Intellectual Property of Japan, December 2011
  • Co-author, "Bd. of Regents of the Univ. of Wis. v. Phoenix Int'l Software, Inc.; Wisconsin Cannot Badger Phoenix with Sovereign Immunity," The Intellectual Property Strategist, November 2011
  • Co-author, "John Wiley & Sons v. Kirtsaeng," The Intellectual Property Strategist, September 2011
  • Co-author, "Centocor v. Abbott Labs: Must You Only Preach What You Practice?" The Intellectual Property Strategist, April 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
  • 'Free and Clear' Bankruptcy Sales Do Not Extinguish Claims of Patent Infringement," Bloomberg Law Reports, September 2, 2008
  • "Quanta Computer, Inc., et al., v. LG Electronics, Inc.: Patent Exhaustion Restrictions May Not Be…Exhausted," The Intellectual Property Strategist, August 2008
  • "Enforcement Issues Raised By Geographically Descriptive Marks," The Intellectual Property Strategist, June 2008
  • "Reforming Ourselves out of the Green Boom," Energy Law360, March 25, 2008
  • "New Challenges of Proving 'Market Power' in Patent Tying Cases," The Practical Litigator, March 2007
  • Does Bankruptcy Absolve "Patent Infringement Liability?" Patent Strategy & Management, June 2006
  • "New Antitrust Considerations for Tying Schemes," The Intellectual Property Strategist, June 2006
  • "Supreme Court Relaxes View of Tying Patents," New York Law Journal, March 2006
  • "You're Not Exhausted: U.S. Patent Rights are Not Exhausted by Foreign Sales," The Intellectual Property Strategist, March 2005
  • "Interpreting Patent Claims," The Intellectual Property Strategist, August 2004
  • "Chickens First or Eggs: Pre-Filing Commercialization Efforts," Patent Strategy & Management, July 2004
  • "Selecting the Right Forum for a Patent Dispute," New York Law Journal, May 7, 2004
  • "Whether to Cancel National Trademark Registration In Favor of a CTM," The Intellectual Property Strategist, December 2003
  • "Missing the Mark – The Downside of Not Using the Patent Number," The Intellectual Property Strategist, January 2003
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
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
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