Matthew K. Blackburn

Location

Education

  • Georgetown University Law Center (J.D., 1997)
  • Stevens Institute of Technology (B.Eng., Polymer Engineering, with high honors, 1994)

Areas of Practice:

Admitted to Practice:

  • California
  • District of Columbia
  • Maryland
  • U.S. Patent and Trademark Office
  • U.S. District Court for the District of Columbia
  • U.S. Court of Appeals, Federal Circuit
  • U.S. District Court, Northern District of California
  • U.S. District Court, Central District of California
  • U.S. District Court, Eastern District of California
  • U.S. Court of Appeals, 9th Circuit
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Matthew K. Blackburn

Partner

(415) 692-5202

[email protected]

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Matthew Blackburn is a partner in Diamond McCarthy’s San Francisco office.  Matt is a senior patent and intellectual property (IP) litigator who focuses on IP litigation (patent, trademark, and copyright), and pre-litigation counseling.

His experience involves serving as a lead attorney and trial counsel in high-stakes patent infringement litigation, counseling clients concerning various IP matters, and providing legal analysis of validity, infringement, and freedom to operate issues. This work has encompassed a wide array of technology areas, including medical devices, polymer products, computer and networking equipment, consumer products, electronics equipment, industrial equipment, pharmaceuticals, software, and various mechanical devices.

Matt is a registered patent attorney with the United States Patent and Trademark Office (USPTO).  His other experience includes post-issuance review proceedings, Board appeals, and ex parte prosecution before the USPTO, as well as client counseling regarding IP strategy and portfolio development.

Matt currently serves as the Chair of the Patent Litigation Committee for the American Bar Association's Intellectual Property Law Section (2016-2017 term). In addition, Matt frequently lectures at continuing legal education seminars and writes articles on various patent law topics.

  • Merial Ltd. v. Intervet Int’l B.V., VID399/2015, Federal Court of Australia, Victoria Registry (participated in Australian litigation as an expert in U.S. patent law; case relates to an ownership dispute tracing its origins back to research and development work performed in the United States).
  • Mellanox Techs. v. Methode Elecs.,4:15-cv-3730 (N.D. Cal.) (representing defendant in a patent infringement action relating to electrical connectors).
  • Bluestone Innovations v. Feit Elec. Co., 3:15-cv-05479 (N.D.Cal.) (represented defendant in patent action regarding LED substrate technology; case settled).
  • Gonzalez v. Tagged, Inc., 4:16-cv-574 (N.D. Cal.) (represented individual inventor in a multi-patent infringement action regarding website and advertising technology).
  • NobelBiz, Inc. v. LiveVox, Inc., 4:13-cv-01773 (N.D. Cal.) and NobelBiz, Inc. v. Five9, Inc., 4:13-cv-01846 (N.D. Cal.) (represented defendants in multi-patent infringement action relating to telephone call-center technology).
  • Gonzalez v. Social Concepts, Inc., 4:15-cv-01719 (N.D. Cal.) (represented plaintiff, an individual inventor, in a multi-patent infringement action relating to website and advertising technologies; case settled).
  • W.L. Gore & Assocs., Inc. v. AGA Medical Corp., 0-12-cv-02684 (N.D. Cal.) (lead counsel for declaratory judgment plaintiff WL Gore in patent litigation defending Gore’s new medical device, the Gore Septal Occluder; case settled).
  • Genentech, Inc. v. Apotex, Inc., 3-11-cv-02410-JSW (N.D. Cal.) (represented defendant Apotex in Hatch-Waxman patent infringement litigation regarding Apotex’s ANDA to make a generic version of transplant drug Valcyte, case settled). 
  • 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 dismissed after summary judgment of non-infringement; affirmed per curiam by Court of Appeals for the Federal Circuit). 
  • 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.) (represented patent owner in infringement litigation relating to antiperspirant compositions; case settled). 

American Bar Association

  • Chair, IP Law Section, Patent LItigation Committee (2015-2017)
  • Vice Chair, IP Law Section, Patent Litigation Committee (2013-2015)
  • Co-chair, IP Law Section, Patent Litigation Subcommittee (Opinions & willful infringement) (2012-2013)