Matthew Blackburn is the Managing Partner of the Locke Lord LLP San Francisco office. He is a patent lawyer who advises the medical products industry regarding all aspects of intellectual property (litigation representation, client counseling, patent procurement).
Mr. Blackburn has served as a lead attorney and trial counsel in patent infringement litigation, counseled clients concerning intellectual property portfolio development and rendered opinions on validity, infringement, and freedom to operate on a wide array of technologies, including vascular grafts, stent-grafts, endovascular delivery systems, catheters, pharmaceuticals, polymeric compositions, and more.
A USPTO registered patent attorney, his procurement experience involves ex parte prosecution, reexamination and reissue proceedings, contested USPTO proceedings (e.g., patent interferences), as well as numerous appeals to the Board of Patent Appeals & Interferences.
Education
- J.D., Georgetown University Law Center, 1997
- B.Eng, Polymer Engineering, with high honors, Stevens Institute of Technology, 1994
Bar Admissions
- California
- Maryland
- District of Columbia
Admitted To Practice
- U.S. Patent and Trademark Office
- U.S. District Court for the District of Columbia, 2006
- U.S. Court of Appeals for the Federal Circuit, 2007
- U.S. District Court for the Northern District of California, 2009
- U.S. District Court for the Central District of California, 2009
- U.S. District Court for the Eastern District of California, 2013
Representative Experience
District Court Litigation
- W.L. Gore & Assocs., Inc. v. AGA Medical Corp., 0-12-cv-00827 (D. Minn.) (lead counsel for declaratory judgment plaintiff WL Gore in patent litigation defending Gore’s new medical device, the Gore® Septal Occluder; case ongoing)
- Genentech, Inc. v. Apotex, Inc., 3-11-cv-02410-JSW (N.D. Cal.) (representing defendant Apotex in Hatch-Waxman patent infringement litigation regarding Apotex’s ANDA to make a generic version of transplant drug Valcyte®; case ongoing)
- MIS Sciences Corp. v. Trust Data Solutions, LLC, 3-11-cv-05444-MEJ (N.D. Cal.) (represented defendant Trust Data Solutions in trademark infringement litigation; case settled).
- AGA Medical Corp. v. W.L. Gore & Assocs., Inc., 0-10-cv-03734 (D. Minn.) (lead counsel for defendant WL Gore in patent litigation relating to medical device for the heart; obtained claim construction decision; case ongoing).
- Ledergerber Medical Innovations v. W. L. Gore & Assocs., Inc., No. 1-07-cv-01593 (N.D. Ill.) (lead counsel for defendant WL Gore and obtained summary judgment of invalidity on Ledergerber’s patent directed to textured plastic medical implant).
- Medtronic, Inc. v. W. L. Gore & Assocs., Inc., No. 3-06-cv-04455-JSW (N.D. Cal.) (represented defendant WL Gore in patent litigation relating to specialty metal alloys and stent architecture; case settled before trial).
- Edwards Lifesciences LLC v. W. L. Gore & Assocs., Inc., No. 03-cv-03817-JSW (N.D. Cal.) (lead counsel for defendant WL Gore and obtained summary judgment of non-infringement on four Edwards patents directed to devices for treating abdominal aortic aneurysms).
- E.I duPont de nemours & Co. v. Avery Dennison Corp., No. 1-02-cv-00451 (D. Del.) (represented plaintiff DuPont as lead counsel in dispute concerning patent inventorship and ownership over technology relating to PVDF color print laminates; case settled).
- Kelly v. W. L. Gore & Assoc., No. 1-00-cv-01691 (D. Colo.) (defended WL Gore against accusations that it stole technology relating to artificial arteries; case dismissed with prejudice).
- ALS Enterprises, Inc. v. Whitewater Outdoors, No. 3-99-cv-00700 (W.D. Wisc.) (represented defendant WL Gore in patent litigation relating to special hunting apparel; case settled).
- The Procter & Gamble Co. v. Conopco, Inc., No. 98-cv-00767 (E.D. Va.) (1998) (represented patent owner in infringement litigation relating to antiperspirant compositions; case settled).
Appellate Experience
- In re AGA Medical Corp., Misc. Dkt. No. 125 (Fed. Cir. 2012) (represented WL Gore in opposing patent owner’s request for writ of mandamus dismissing declaratory judgment action).
- Ledergerber Medical Innovations v. W. L. Gore & Assocs., Inc., Appeal No. 2011-1379 (Fed. Cir.) (represented appellee WL Gore in appeal, which affirmed district court’s grant of summary judgment of invalidity of medical device patent).
- Edwards Lifesciences LLC v. W. L. Gore & Assocs., Inc., Appeal No. 2009-1006 (Fed. Cir.) (represented appellee WL Gore in appeal, which affirmed district court’s grant of summary judgment of non-infringement of four medical device patent).
Other Experience Mr. Blackburn also has extensive experience with patent prosecution and client counseling and opinions. This work has encompassed various medical devices, polymer products as well as a wide array of mechanical devices. Representations before the USPTO include contested patent inference, patent board appeal, reexamination, and reissue proceedings, such as:
- Provost v. Goulait et al., USPTO Patent Interference No. 103,718 (represented Procter & Gamble in a case involving fastening hooks for use with non-woven fabrics. Established and executed the interference strategy for the priority phase of case, resulting in settlement of interference).
- Ex Parte Reexamination Control No. 90/009,403 (represented patent owner and obtained reexamination certificate of U.S. Patent No. 6,254,978 relating to fuel cell membrane technology)
- 10/729,184 (represented patent applicant in patent prosecution appeal to the Board of Patent Appeals and Interferences relating to motor vehicle lighting technology)
- 09/186,687 (represented patent applicant in patent prosecution appeal to the BPAI relating to heat exchanger technology).
- 08/937,512 (represented patent applicant in patent prosecution appeal to the BPAI relating to motor vehicle remote control technology).
Publications & Presentations
-
Quoted,
"Medical Device Patents Surging, Industry Players Forecast the Future,"
Medtech Insight Market Briefs
(May 2013)
-
Author,
"
Locke Lord QuickStudy: Covered Business Method Review - An Important Litigation Tool for Financial Services and Software Companies
,"
Locke Lord
(May 15, 2013)
-
Speaker,
"Calculating & Proving Medical Device Damages: Analyzing Drivers of the Billion Dollar Infringement Verdict,"
3rd Annual American Conference Institute Advanced Summit on Medical Device Patents, Chicago
(March 6, 2013)
-
Co-Author,
"
Locke Lord QuickStudy: Patenting Strategy in Light of U.S. Patent Office Transition from First-to-Invent to First-to-File System
,"
Locke Lord LLP
(January 8, 2013)
-
Co-Author,
"Joint Infringement and Indirect Infringement Under McKesson,"
American Conference Institute
(February 29, 2012)
-
Co-Author,
"Locke Lord QuickStudy: Effect of America Invents Act on Patent Litigation and Prosecution,"
Locke Lord
(September 16, 2011)
-
Speaker,
"Balancing Risks and Navigating the Interplay Between Reexamination and Litigation,"
Inaugural American Conference Institute Advanced Summit on Medical Device Patents, New York
(January 31, 2011)
-
Author,
"The Role Of Dictionary Definitions In Claim Construction: Opportunities And Pitfalls Flowing From The Federal Circuit’s Altiris Decision,"
MEALEY’S LITIGATION REPORT
(June 16, 2003)
-
Author,
"Festo Removes The ‘High Hurdle’ To Summary Judgment Of Non-Infringement,"
MEALEY’S LITIGATION REPORT
(December 11, 2000)
-
Author,
"A Subsidiary Website Can Be A Basis For Personal Jurisdiction Over A Parent Corporation,"
MEALEY’S LITIGATION REPORT
(January 24, 2000)
Professional History
- Partner, Locke Lord LLP
- Patent Attorney, Morgan & Finnegan
Professional Affiliations & Achievements
- American Bar Association
- Co-chair, IP Section subcommittee (Opinions & willful infringement) 2012-13
- American Intellectual Property Law Association
- San Francisco Intellectual Property Law Association
- Federal Circuit Bar Association and Intellectual Property Owner’s Association
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