Matthew R. Shapiro
Matthew Shapiro is a trial lawyer in the intellectual property litigation group, with experience across all major patent venues, including patent-centric district courts, the International Trade Commission, and the Patent Trial and Appeal Board.
Matthew represents clients from pre-suit investigation through appeal, with experience leading technical teams, managing discovery, developing case strategies, taking and defending depositions, and preparing and presenting witnesses at trial. Matthew also has considerable experience with post-grant proceedings before the United States Patent and Trademark Office, where he has served as counsel in more than thirty proceedings.
His experience spans a broad range of technical fields, including computer-based technologies in the consumer electronics, industrial process management, insurance, digital printing, and internet-based service industries. Matthew also maintains a pro bono practice, representing clients in both state and federal courts.
In law school, Matthew worked as a judicial extern for the Honorable Kathleen M. O’Malley, U.S. Court of Appeals for the Federal Circuit and for the Honorable Colleen Kollar-Kotelly, U.S. District Court for the District of Columbia.
Prior to law school, Matthew worked as a computer and software engineer for Lockheed Martin Maritime Systems and Sensors designing software in Java, C, and C++ for sonar navigation and positive train control systems. Matthew is the co-inventor of U.S. Patent No. 7,383,719 for an Automated Passenger Screening System, which resulted from his active contributions to the company’s “think tank.”
Matthew has an undergraduate degree in Computer Science and Engineering from the University of Connecticut ranking first in his graduating class in the school of engineering. He wrote his honors thesis on a Method for Quantitative Analysis of the Software Defect Life Cycle.
- Certain Digital Imaging Devices and Products Containing the Same and Components Thereof, 337-TA-1231 (ITC): Defending Samsung against claims of patent infringement and trade secret misappropriation in a Section 337 action brought by non-practicing entity Pictos Technologies, Inc.
- Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof, 337-TA-1200 (ITC): Defending Roku, Inc. against claims of infringement in a six-patent case relating to programming of universal remote controls.
- A Leading Private Research University (JAMS): Successfully defended client against an alleged fraud claim related to the licensing of a pharmaceutical asset.
- Samsung Electronics Co., Ltd. v. Cellect, LLC (PTAB, USPTO): Representing Samsung as Petitioner in multiple inter partes reviews and ex parte reexaminations concerning image sensor patents.
- Certain Wireless Mesh Networking Products and Related Components Thereof, 337-TA-1131 (ITC): Achieved a finding of no violation on behalf of Respondents Emerson Electric Co. and Tadiran Batteries Ltd. in a Section 337 investigation brought by SIPCO LLC related to wireless mesh networking products.
- Emerson Electric Co. v. SIPCO et al. (N.D. Ga., PTAB, Fed. Cir., S. Ct.): Represent Emerson Electric in a 10-patent lawsuit, multiple inter partes review and covered business method proceedings and appeals therefrom relating to wireless mesh network technology.
- Godo Kaisha IP Bridge 1 v. TCL Communication Technology Holdings Limited et al. (D. Del.): Represented IP Bridge at jury trial in asserting standards-essential patents related to the 4G/LTE telecommunications standard. After seven-day trial, the jury found all four asserted claims valid and infringed and awarded FRAND damages.
- Activision Blizzard, Inc. et al. v. Acceleration Bay LLC (PTAB, Fed. Cir.): Represented three global computer gaming companies, including Electronic Arts and Activision Blizzard, on appeal and during the underlying inter partes review proceedings challenging three patents related to broadcasting information over computer networks.
- Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., Ltd. (E.D. Tex., PTAB, Fed. Cir.): Defended client as lead technical associate for one of three asserted patents during jury trial resulting in a jury finding of invalidity, and represented client through appeal of an inter partes review proceeding related to same patent, resulting in a finding of all challenged claims unpatentable.
- A Leading Provider of Multimedia Control Devices (E.D. Tex.): Defended against alleged infringement of network-based lighting control products by a non-practicing entity.
- A Large Japanese Automotive Manufacturer (E.D. Tex.): Defended against infringement allegations concerning LCD backlighting and LED tail light technologies by a non-practicing entity.
- Shortridge v. Automatic Data Processing, Inc. (N.D. Cal.): Defended ADP against patent infringement allegations related to payroll reporting. Patent invalidated for claiming unpatentable subject matter under the Supreme Court’s Alice decision.
- Athenahealth, Inc. v. AdvancedMD Software, Inc. (D. Mass.): Defended an Automatic Data Processing, Inc. subsidiary in patent infringement litigation involving web-based healthcare insurance claims processing.
- RR Donnelley & Sons Company v. Xerox Corporation (N.D. Ill., PTAB): Asserted six RR Donnelley patents concerning variable data printing and raster image processing technologies, and defended validity of two asserted patents in an inter partes review proceeding.
- A Major Commercial Insurance Company (N.D. Ohio): Defended against infringement allegations related to usage-based insurance underwriting based on vehicle telematics data, and asserted patents related to processing and quoting of insurance policies.
- Co-author, “Patent Eligibility Is Becoming Increasingly Relevant At ITC,” Law360 (November 29, 2021)
- Profiled, “The ABCs of the ITC,” Law.com Skilled In the Art (May 21, 2021)
- Cited, “PTAB H1 Filing Rankings: Top Petitioners, Owners and Law Firms,” Managing Intellectual Property (July 23, 2020)
- Cited, “PTAB Nixes Sipco Wireless Communication Patent Under Alice,” Law360 (January 16, 2018)
- Cited, “Sipco Defends Wireless Network Patent To PTAB,” Law360 (November 13, 2017)
- Cited, “PTAB Says Sipco Communication Patent Eligible for Review,” Law360 (January 23, 2017)
- Speaker, “Navigating New Developments in Parallel Proceedings with the ITC and PTAB,” ACI ITC Litigation and Enforcement Conference (June 7-8, 2022)
- JD, with honors, The George Washington University Law School, 2012; ABA/BNA Award for Excellence in Intellectual Property Law; articles editor, Federal Circuit Bar Journal; Moot Court Board
- BSE (Computer Science and Engineering; Mathematics (minor)), summa cum laude, University of Connecticut, 2007; Honors Scholar;Tau Beta Pi; Upsilon Pi Epsilon
Admissions / Qualifications
- New York, 2013
- U.S. Patent and Trademark Office, 2013
- U.S. Court of Appeals for the Federal Circuit, 2016
- U.S. Court of Appeals for the Second Circuit, 2015
- U.S. District Court for the Eastern District of Texas, 2014
- U.S. District Court for the Eastern District of New York, 2014
- U.S. District Court for the Southern District of New York, 2014
- U.S. District Court for the Western District of New York, 2021
- The Best Lawyers in America – Ones to Watch (2021-2022)
- New York Super Lawyers Rising Star (2018-2021)
- ABA/BNA Award for Excellence in Intellectual Property Law (2012)
- Tau Beta Pi Engineering Honor Society
- Upsilon Pi Epsilon Computer Science Honor Society