Matthew W.Johnson (Matt)

Partner

(T) 1.412.394.9524

Matt Johnson is one of the Firm's primary contacts on practice before the USPTO's Patent Trial and Appeal Board (PTAB), where patentability of issued patents can be challenged. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board, including trials for inter partes review (IPR) and Covered Business Method review (CBM), since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit. Matt is the administrator of Jones Day's PTAB Litigation Blog (PTABLitigationBlog.com).

Matt is a registered patent attorney and has been representing inventors before the USPTO since 2006. Utilizing his background as an electrical engineer and experience as a database programmer, Matt has drafted and prosecuted hundreds of patent applications directed toward software and hardware innovations, with significant emphasis on autonomous vehicles and robotics, statistics, small-scale device fabrication, data signal communication, RFID, and medical devices. Matt also provides services in other intellectual property-related areas including IP due diligence, licensing negotiation and review, and patent portfolio review and strategy development. Matt regularly speaks on the intersection of law and technology, particularly AI and robotics, including teaching IP-related classes at Carnegie Mellon University's Robotics Institute.

Matt currently serves on the boards of Life Transitions Plus and Transitional Services, helping people with mental disabilities discover and achieve their hopes and dreams for a meaningful life in the community.

Experience

  • Canon and Nikon win eight IPRs against two Papst patentsJones Day successfully represented both Canon and Nikon in eight inter partes reviews relating to two patents owned by Papst Licensing (U.S. Patent Nos. 8,504,746 and 8,966,144).
  • Elo Touch Solutions resolves multi-patent, multi-venue dispute with 3M regarding touch screen technologyJones Day represented Elo Touch Solutions, Inc. in a four-patent dispute with 3M regarding touch screen technology.
  • Dexcom achieves unpatentability ruling in PTAB disputeJones Day counseled Dexcom, Inc. to a victory that challenged the claims of U.S. Patent No. 7,529,574 at the Patent Trial and Appeal Board (PTAB).
  • Dexcom obtains stay of patent infringement action filed by AgaMatrixJones Day is defending Dexcom, Inc. in a patent infringement action before the United States District Court for the District of Oregon (Portland Division).
  • Dexcom successfully petitions PTAB to institute IPRs on asserted patents and obtains stay of district court litigationOn behalf of San Diego-based medical device company Dexcom, Inc., Jones Day successfully petitioned the PTAB to commence IPRs as to all asserted claims of two patents asserted in litigation by plaintiff WaveForm Technologies, Inc. (formerly AgaMatrix, Inc.) related to continuous glucose monitors.
  • AbbVie defeats IPR petition filed by Coherus challenging Humira®Jones Day successfully defended AbbVie Inc. in connection with an IPR petition brought by Coherus Biosciences, Inc. against U.S. Patent No. 9,114,166, which is directed to formulations for AbbVie's antibody therapeutic Humira®.
  • Xilinx garners institution of PTAB IPRs of Papst's U.S. patentsJones Day represents Xilinx, Inc. in the prosecution of IPRs of Papst's U.S. Patent Nos. 6,574,759 and 6,704,891.
  • SAP establishes diverse patent portfolio directed to software and database innovationsJones Day represents a leading enterprise software and database developer SAP SE in managing patent portfolios directed to diverse innovations including database technologies, mobility, UX, cloud computing, and big data.
  • Avid successfully defends PTAB patentability ruling before Federal CircuitJones Day, on behalf of Avid Technology, Inc. ("Avid"), successfully obtained a unanimous panel decision of the United States Court of Appeals for the Federal Circuit on March 1, 2016, affirming the PTAB's final written decision confirming the patentability of claims of Avid's U.S. Patent No. 5,495,291, directed to video decompression technologies.
  • BlackBerry acquires Good Technology for $425 millionJones Day advised BlackBerry Limited (NASDAQ: BBRY; TSX: BB), a global leader in secure mobile communications, in its acquisition of Good Technology for $425 million in cash.
  • Merial defends IPR of U.S. Patent No. 6,517,843Jones Day is assisting Merial Limited in defending an IPR of U.S. Patent No. 6,517,843 entitled "Reduction of Porcine Circovirus-2 Viral Load with Inactivated PCV-2."
  • Tekni-Plex acquires Tech-Seal Products and BeybaJones Day advised Tekni-Plex, Inc., a portfolio company of private equity fund American Securities, in connection with its acquisition of Tech-Seal Products, Inc. and Beyba, Inc. (collectively "Tech-Seal").
  • ANSYS expands global intellectual property portfolioJones Day provides IP advice to ANSYS, Inc. and assists with the prosecution and management of its international patent portfolio related to engineering simulation for assisting the world's most innovative companies in delivering radically better products to their customers.
  • Frank Calandra, Inc. acquires McSweeney'sJones Day advised Frank Calandra, Inc., a Pittsburgh-based global manufacturer of ground control technology for the mining, tunneling, and civil construction industries, in its acquisition of McSweeney's Inc.
  • Biolase Technology conducts inter partes reexamination of U.S. Patent No. 7,485,116Jones Day represents Biolase Technology Inc. in an inter partes reexamination of U.S. Patent No. 7,485,116.
  • Progressive Casualty Insurance conducts covered business method review of U.S. Patent No. 8,140,358Jones Day is assisting Progressive Casualty Insurance in conducting a covered business method review of U.S. Patent No. 8,140,358 entitled "Vehicle Monitoring System".
  • Progressive Casualty Insurance conducts covered business method review of U.S. Patent No. 8,090,598Jones Day represents Progressive Casualty Insurance Company in conducting a covered business method review of U.S. Patent No. 8,090,598 entitled "Monitoring System for Determining and Communicating a Cost of Insurance".
  • Progressive Casualty Insurance undergoes covered business method patent review of U.S. Patent No. 8,090,598Jones Day represents Progressive Casualty Insurance Company in a covered business method patent review of U.S. Patent No. 8,090,598 entitled "Monitoring System for Determining and Communicating a Cost of Insurance".
  • Progressive Casualty Insurance conducts covered business method review of U.S. Patent No. 6,064,970Jones Day represents Progressive Casualty Insurance in a covered business method review of U.S. Patent No. 6,064,970 entitled "Motor Vehicle Monitoring System for Determining a Cost of Insurance".
  • Progressive Casualty Insurance undergoes covered business method patent review of U.S. Patent No. 6,064,970Jones Day represents patent owner Progressive Casualty Insurance in a covered business method patent review of U.S. Patent No. 6,064,970 entitled "Motor Vehicle Monitoring System for Determining a Cost of Insurance". 
  • Speaking Engagements

    • November 16, 2016
      IP Roundup
    • November 20, 2013
      2013 Speaker Series: Whose Content Is It Anyway? IP Issues in Social Media
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