Matthew W.Johnson (Matt)

Partner

Pittsburgh + 1.412.394.9524

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Matt Johnson is one of the Firm's primary contacts on practice before the United States Patent and Trademark Office's (USPTO) Patent Trial and Appeal Board (PTAB), where patentability of issued patents can be challenged. Currently co-chairing the Firm's PTAB area 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, radio frequency identification (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 (artificial intelligence) 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

  • Cylance builds leading patent portfolio directed to cybersecurity technologies using AIJones Day is representing Cylance Inc. in the development and prosecution of a portfolio of over 150 issued patents directed to AI-enabled cybersecurity technologies.
  • NXP challenges competitor's 14 RFID patents at PTABJones Day represented petitioner NXP USA, Inc. in several inter partes review (IPR) and post grant review (PGR) proceedings at the United States Patent Office's Patent Trial and Appeal Board (PTAB).
  • SOLiD defeats patent infringement claims in U.S., UK, and Germany over DAS equipment for 5G technologyJones Day successfully represented SOLiD, Inc. in multi-jurisdictional patent litigation proceedings brought by a competitor who alleged that client's leading Distributed Antenna System ("DAS") solutions infringe claims of six patents (two European and four U.S.).
  • Andrew Dzurak and Allectus Capital create leading quantum computing company, Diraq Pty LtdJones Day acted for Professor Andrew Dzurak and Allectus Capital, in the creation of a leading quantum computing company, Diraq Pty Ltd (formerly, SiMOS Newco Pty Ltd) whose founding shareholders consist of the University of New South Wales, Allectus Capital and Professor Dzurak.
  • Cohesity disposes of six-patent litigation brought by adverse competitor CommvaultJones Day successfully represented Cohesity Inc. ("Cohesity") and obtained dismissal in a six-patent, competitor suit filed by Commvault Systems in April 21, 2020.
  • SAP wins summary judgment on Teradata trade secret and antitrust claimsJones Day successfully defended SAP, one of the world's leading producers of software for the management of business processes, against trade secret and antitrust claims in a lawsuit filed in the Northern District of California.
  • Hope Pharmaceuticals files two IPR petitions challenging all claims of two Fennec patents relating to sodium thiosulfateJones Day represents Hope Medical Enterprises, Inc. ("Hope Pharmaceuticals") in two petitions for inter partes review ("IPR") at the United States Patent Office's Patent Trial and Appeal Board ("PTAB").
  • Google invalidates three patents in IPRs asserted against Google AssistantJones Day successfully represented Google LLC ("Google"), invalidating three patents owned by Sovereign Peak Ventures, LLC ("SPV").
  • REGENXBIO successfully blocks institution of post-grant review of gene therapy patentJones Day successfully defended REGENXBIO, Inc. against a post-grant review (PGR) petition filed by Passage Bio before the U.S. Patent Trial and Appeal Board (PTAB) against one of REGENXBIO's AAV9 patents.
  • 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.
  • 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).
  • MNTech and Elo Touch Solutions resolve multi-patent, multi-venue dispute with 3M regarding touch screen technologyJones Day represented MNTech Co., Ltd. and Elo Touch Solutions, Inc. in a four-patent dispute with 3M regarding touch screen technology.
  • Alisea builds patent portfolio directed to the use of artificial intelligence to identify maintenance issues in HVAC systemsJones Day is representing Alisea S.r.l. in the development and prosecution of a portfolio of patents directed to the use of artificial intelligence to identify maintenance issues in HVAC systems.
  • 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).
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    April 2024 Blog

    “Known” Claim Elements Alone Insufficient for Motivation to Combine, PTAB Litigation Blog

    April 2024 Alert

    USPTO Issues New Guidance on Practitioners' Use of AI

    April 2024 Blog

    Claim Construction Dispositive In Patentability Determination, PTAB Litigation Blog

    March 2024 Reprint

    PTO Practice (IP Litigator)

    February 2024 Commentary

    USPTO Issues New Guidance for Inventions Assisted by Artificial Intelligence: Human Contribution Is Key

    January 2024 Reprint

    PTAB Issues Back-to-Back Fintiv Denials After Dry Spell (IP Litigator)

    December 2023 Blog

    Penumbra Illuminates Priority Dates Pre and Post-AIA, PTAB Litigation Blog

    October 2023 Blog

    Patent Owner Unable to Change Inventorship During Remand, PTAB Litigation Blog

    October 2023 Blog

    Parallel Petitions Denied, PTAB Litigation Blog

    October 2023 Blog

    Limitations Absent from a Notice of Allowability May be Material, PTAB Litigation Blog
    View All

    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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