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Brian D. Matty

Brian D. Matty

Partner, New York
PHONE: 212-808-2947 FAX: 212-351-3401
Brian Matty’s practice focuses on intellectual property disputes in federal courts and at the Patent Trial and Appeal Board.  He has represented clients in cases relating to a wide range of technologies, including diagnostic genetic testing, catheter technologies, robotic surgery, neurostimulation, wireless communications, and media distribution networks.

Brian is a trial lawyer with extensive experience in all aspects of patent litigation.  He is also a registered attorney at the US Patent Office and helps clients navigate post-grant proceedings at the Patent Trial and Appeal Board.  Brian led the defense of biotech firm Ravgen’s patents against a series of ten inter partes review petitions against some of the largest diagnostic testing companies in the world.  Brian secured decisions upholding all claims of Ravgen’s patents as lead counsel at the PTAB.  Brian also argued appeals of the IPRs at the Federal Circuit and again secured decisions affirming all claims of the Ravgen patents.  The Ravgen patents Brian defended were asserted in district court, where Brian and the Desmarais LLP team secured a $272.5 million jury verdict and an additional $100 million in enhanced damages for willful infringement against Labcorp, and secured a $57 million verdict for Ravgen against Natera.

Brian was also a key member of the Desmarais LLP team that represented IBM in its first jury trial as a patentee in decades.  During the trial, Brian conducted the examination of an IBM licensing executive who provided the basis for IBM’s damages claims.  The trial ended in an $82.5 million jury verdict finding all four asserted IBM patents valid and willfully infringed.

Brian also assists clients with offensive and defensive pre-suit investigations and patent assertion strategy.  He has extensive experience advising clients in patent licensing and settlement negotiations, and he regularly advises clients on developing and maintaining patent portfolios.

Prior to joining Desmarais LLP, Brian was a patent agent and associate at Ropes & Gray, where he gained significant experience in patent prosecution and managing large patent portfolios before focusing on patent litigation.  Brian is also a named inventor on U.S. Patent No. 8,496,655, which covers a catheter-based medical device for removing heart valves during minimally-invasive heart surgery.

Prior Experience

  • Associate, Ropes & Gray LLP, 2014-2016
  • Patent Agent, Ropes & Gray LLP, 2009-2014

Courts

  • United States District Court for the Eastern District of New York
  • United States District Court for the Southern District of New York
  • United States District Court for the District of Massachusetts
  • United States Court of Appeals for the Federal Circuit
 
 

 


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Representative Matters

  • Represents Ravgen in multiple patent litigations and inter partes reviews against Labcorp, Natera, Quest, Illumina, Roche, Foundation Medicine, Myriad, and Progenity.  Secured decisions upholding all claims of Ravgen’s patents that were challenged in ten separate inter partes reviews.
  • Represented IBM in patent litigation against Groupon that resulted in an $82.5 million jury verdict finding all four IBM patents at issue valid and willfully infringed.  Participated in all aspects of the case, including successfully arguing claim construction and summary judgment issues.  Conducted direct examination of an IBM licensing executive at trial.
  • Represented IBM against Expedia, Hotwire, Orbitz, Traelocity, Homeaway, and Hotels.com in multiple patent litigation cases concerning web technology and e-commerce.  Overcame repeated challenges to IBM’s patents in district court and before the Patent Trial and Appeal Board before obtaining a favorable settlement.
  • Represented IBM in patent litigation against Priceline, OpenTable, and Kayak concerning web technology and e-commerce patents.  Defeated repeated challenges to IBM’s patents in district court and at the Patent Trial and Appeal Board before obtaining a favorable settlement.
  • Represented a leading consumer electronics company in patent infringement litigation involving location-based services software.
  • Represented LifeCell Corporation against TELA Bio, Inc. in patent infringement and trade secret cases involving reconstructive tissue matrix products.  
  • Represented Double Down Interactive LLC, a subsidiary of International Game Technology, in litigation involving patents directed to electronic gaming.

News & Publications

EDUCATION

Fordham University School of Law, J.D., 2014

University of Michigan, M.S.E., Biomedical Engineering, 2009

University of Michigan, B.S.E., Biomedical Engineering, 2008, magna cum laude
 

ADMISSIONS

2012, United States Patent and Trademark Office

2014, Massachusetts

2016, New York
 

OFFICES