Matthew W. Siegal, a partner in Stroock’s Intellectual Property Group, concentrates his practice on extensive patent litigation, prosecution, opinion, licensing and due diligence activities for some of the largest companies in the world.

His litigation practice has involved all aspects of discovery, pre-trial, trial and appeal before the Federal Courts, State Courts and International Trade Commission. His patent cases have involved cameras, inks, pharmaceuticals, high tech metals, polymer consumer products, liquid crystal displays, biotechnology and other areas.

Mr. Siegal has been an integral member of a trial team that has waged a campaign against various camera manufacturers and distributors that infringed Fuji Photo Film Co., Ltd.’s one-time use camera patents. This included numerous hearings before the International Trade Commission and a jury trial in the District of New Jersey. The successful result of this campaign has been an ITC general exclusion order, prohibiting the importation of infringing cameras, the tenth largest patent infringement jury verdict of 2002 and a successful licensing program. Mr. Siegal has been involved in numerous other jury and bench trials and hearings involving all aspects of intellectual property law.

Mr. Siegal’s patent prosecution experience includes the prosecution of U.S. and worldwide patent applications in chemical, materials, biotechnical, electrical and mechanical fields, involving the areas of insecticides, coating and adhesive resins, printers, printing products, magnetic recording media, polymers, distillations and separations, consumer health care products, pharmaceutical development and use, chemical based products, imaging materials, and catalysts.

Mr. Siegal has also provided due diligence assistance in connection with asset purchases, sales, financing and underwriting. He also prosecutes trademark and copyright applications; participates in trademark opposition proceedings; drafts and negotiates domestic and international license and settlement agreements and performs intellectual property due diligence. He has published articles and lectured internationally on a wide variety of intellectual property topics such as on pharmaceutical and biotech patent litigation.

Memberships

New York Intellectual Property Law Association; Licensing Executive Society

Activities

Board of Editors, The Intellectual Property Strategist; Board of Editors, Patent Strategy & Management; Speaker, ACI Biotech Pharma Patent/FDA Bootcamp, San Francisco, September 18, 2007; Lecturer, 23rd Annual Joint Patent Practice Seminar, New York City, May 9, 2007; Lecturer, Life Sciences IP Due Diligence for Buyers Best Practices Forum (New York City), April 12, 2007; Lecturer, New York Intellectual Property Law Association Program on the Duty of Disclosure Owed the U.S. Patent & Trademark Office (New York City), May 20, 2005; Lecturer, National Forum on Preventing and Defending Pharmaceutical and Biotech Patent Litigation (Washington, D.C.), February 2-4, 2005; Lecturer, Forum Selection for U.S. Patent Disputes, AIPPI (Japan), February 13, 2004; Author or Co-author: Anti-Patent Trend May Be Shifting Back Toward Greater Protection, New York Law Journal, March 18, 2009; Attacks On U.S. Patent System Threaten Growth Of Green Economy, les Nouvelles, September 2008; ‘Free and Clear’ Bankruptcy Sales Do Not Extinguish Claims of Patent Infringement, Bloomberg Law Reports, September 2, 2008; Quanta Computer, Inc., et al, v. LG Electronics, Inc.: Patent Exhaustion Restrictions May Not BeExhausted, The Intellectual Property Strategist, August 2008; Enforcement Issues Raised By Geographically Descriptive Marks, The Intellectual Property Strategist, June 2008; Reforming Ourselves out of the Green Boom, Energy Law360, March 25, 2008; KSR Int’l Co. v. Teleflex Inc. et al. Supreme Court Clarifies Obviousness, The Intellectual Property Strategist, July 2007; New Challenges Of Proving ‘Market Power’ In Patent Tying Cases, The Practical Litigator, March 2007; "Does Bankruptcy Absolve Patent Infringement Liability?" Patent Strategy & Management, June 2006; New Antitrust Considerations for Tying Schemes, The Intellectual Property Strategist, June 2006; "You’re Not Exhausted: U.S. Patent Rights are Not Exhausted by Foreign Sales, The Intellectual Property Strategist, March 2005; "Interpreting Patent Claims," Intellectual Property Strategist, August 2004; Chickens First or Eggs: Pre-Filing Commercialization Efforts, Patent Strategy & Management, July 2004; "Selecting the Right Forum for a Patent Dispute," New York Law Journal, May 7, 2004; Whether to Cancel National Trademark Registration In Favor of a CTM, The Intellectual Property Strategist, December 2003; Missing the Mark The Downside of Not Using the Patent Number, The Intellectual Property Strategist, January 2003; When Trust is Not Enough: The Duty to Investigate Before Filing, Patent Strategy & Management, December 2001; Business Method Patents: Recent Developments in Examination, Legislation and Litigation, International Legal Strategy, June 15, 2001; The Amazon.com Case: Proof That Current Laws and Practice Are Adequate? The Intellectual Property Strategist, April 2001; Patents’ Effect on Trade Dress Protection, Patent Strategy & Management, April 2001; A Look at Eli Lilly: When Must An Application disclose Unclaimed Subject Matter?, The Intellectual Property Strategist, October 2000; Prozac Patents Satisfied Best Mode Where Omitted Material Was Known and Not Claimed Patent Strategy & Management, September 2000; Eight Pitfalls of Provisional Practice, Patent Strategy & Management, July 2000;To Translate or Not to Translate, That is the Question, The Intellectual Property Strategist, May 2000; Inequitable Conduct as Infringement Defense, The Intellectual Property Strategist, January 2000; Are States Now Immune from Patent and Trademark Infringement Suits? The Intellectual Property Strategist, September 1999; New Risk to Intellectual Property: Can States Infringe with Impunity? The Intellectual Property Strategist, August 1999; Enforcement of U.S. Patent Rights Through The International Trade Commission, International Legal Strategy, July 1999; Utilitarian Objects: Why the Sum is Less Than the Parts, The Intellectual Property Strategist, April 1999; A Better Way to Protect Patents in Europe, The Intellectual Property Strategist, August 1998; "Avoiding Inadvertent Waiver of the Attorney-Client Privilege in U.S. Patent Infringement Litigation, International Legal Strategy, July 15, 1998; Defense to Willful Infringement Can Kill Attorney-Client Privilege, The Intellectual Property Strategist, June 1998; Design Patents: Protecting the Seemingly Unprotectable, The Intellectual Property Strategist, March 1998; Cease and Desist Letters: The Legal Pitfalls for Patentees, Corporate Counsellor, February 1998; "The Importance of Keeping Good Records," International Legal Strategy, December 15, 1997; Does Your Global Patent License Violate ECU Competition Law? The Intellectual Property Strategist, November 1997; Privacy Online: Rules for Webmasters and Web Surfers, The Intellectual Property Strategist, August 1997; Controversy Heats Up Over Whether Hotlinks Can Get You in Hot Water The Intellectual Property Strategist, June 1997; Plusses and Pitfalls of Copyright to Protect Software The Intellectual Property Strategist, May 1997; "The Effects of Infringing a Valid U.S. Patent," International Legal Strategy, March 15, 1997; Are Corporate Officers Immune From Patent Infringement Liability? The Corporate Counsellor, March 1997; Is There a Right to a Jury Trial in a Federal Trademark Dilution Case? The Intellectual Property Strategist, December 1996; Policing Non-Identical Uses of TM’s on Unrelated Goods, The Intellectual Property Strategist, November 1996; How to Limit Enhanced Damages from Patent Infringement, The Intellectual Property Strategist, September 1996; "Court Limits Jury's Role In Patent Interpretation," The National Law Journal, October 23, 1995

Admitted to Practice

New York, 1988

United States District Courts for the Southern and Eastern Districts of New York, 1988

Court of Appeals for the Federal Circuit, 1995

U.S. Court of International Trade, 2004

U.S. Patent and Trademark Office, 1988

Education

J.D., Fordham University School of Law, 1987

B.S., Cornell University, 1984; Chemical Engineering; Phi Beta Kappa