Matthew W.Johnson (Matt)

Partner

Pittsburgh + 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

  • SOLiD fights patent infringement claims over DAS equipment for 5G technologyJones Day is representing SOLiD, Inc. in a multi-jurisdictional patent litigation proceedings brought by a competitor, alleging that client's leading Distributed Antenna System ("DAS") solutions infringe claims of six patents (two European and four U.S.).
  • NEP acquires Prysm Collective, Lux Machina And Halon EntertainmentJones Day advised NEP Group in the acquisition of Prysm Collective, Lux Machina and Halon Entertainment.
  • Qualcomm obtains remand from Federal Circuit based on PTAB's denial of due processJones Day successfully convinced the Federal Circuit to remand the Patent Trial and Appeal Board's ("PTAB's") January 2020 Final Written Decision finding challenged claims of Qualcomm Incorporated's U.S. Pat. No. 9,608,675 ("Power tracker for multiple transmit signals sent simultaneously") unpatentable in six inter partes review ("IPR") proceedings filed by Intel Corporation.
  • Ability Opto-Electronics resolves patent infringement dispute relating to computer camera lensesJones Day defended Taiwan-based Ability Opto-Electronics Technology Co., Ltd. in a patent infringement lawsuit filed by its competitor Largan Precision Co., Ltd., in a case relating to optical lens systems for cameras and computers.
  • Qualcomm successfully defends patentability challenges in five IPR casesJones Day successfully defended challenges to Qualcomm Incorporated's U.S. Pat. No. 9,154,356 ("Low noise amplifiers for carrier aggregation") in five inter partes review ("IPR") proceedings filed by Intel Corporation.
  • NXP files 14 IPR petitions challenging claims of 12 Impinj RFID patentsJones Day is representing NXP Semiconductors N.V. in 14 petitions for inter partes review ("IPR") at the United States Patent Office's Patent Trial and Appeal Board.
  • Allergan defends JUVEDERM® patents against nine IPR petitions filed by ProlleniumJones Day is representing Allergan, Inc. before the U.S. Patent Trial and Appeal Board ("PTAB") on nine IPR petitions filed by Prollenium challenging multiple patents covering certain of Allergan's JUVEDERM® products, hyaluronic acid-based dermal fillers that include the anesthetic lidocaine.
  • Chemco defends against allegations of patent infringement and trade secret misappropriation by competitorJones Day is defending Chemco Systems, L.P. against allegations of patent infringement as well as misappropriation of RDP Technologies, Inc.'s trade secrets in violation of the Pennsylvania Uniform Trade Secrets Act and the Defend Trade Secrets Act of 2016.
  • SAS and IBM challenge patentability of third party patent claims in USPTO reexamination proceedingsJones Day represented SAS Institute, Inc. and International Business Machines Corporation ("IBM") in two patent reexamination proceedings before the USPTO Patent Trial & Appeal Board challenging a software-related patent that had been asserted in a lawsuit filed by InvestPic, LLC.
  • 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 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.
  • Hikvision USA wins dismissal with prejudice in multi-defendant patent infringement suitJones Day successfully obtained a voluntary dismissal with prejudice and award of costs on behalf of Hikvision USA, Inc. in a patent infringement case relating to security surveillance technology.
  • 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."
  • Speaking Engagements

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