Matt Berkowitz’s practice focuses on patent litigation in federal district courts and the International Trade Commission (ITC), as well as post-grant proceedings in the U.S. Patent and Trademark Office. Mr. Berkowitz has experience across a broad spectrum of technologies, including consumer electronics, hybrid vehicles, pre-collision vehicle systems, endodontic instruments, aircraft systems, and pharmaceuticals. 

Mr. Berkowitz has been named one of the “Top 40 under 40 Intellectual Property Lawyers” by the American Society of Legal Advocates. 

Representative Experience

  • Toyota as lead counsel in five inter partes review proceedings. Toyota’s petitions granted on all 50 combined claims across the five proceedings for which review was requested.
  • Toyota in multiple ongoing cases originally involving 24 patents. Multiple patents dismissed before claim construction. 3 of the remaining cases are currently stayed pending resolution of 12 inter partes review petitions filed by Toyota, all of which were instituted by the Patent Trial and Appeal Board. American Vehicular Sciences v. Toyota (E.D. Tex).
  • Elpida (current subsidiary of Micron Technology) in an eight patent semiconductor memory litigation involving district court actions and an ITC investigation, which was successfully settled after summary determination briefing and prior to a hearing. Intellectual Ventures v. Elpida (D. Del., W.D. Wash., ITC).
  • Sony as a complainant in a seven patent ITC investigation concerning mobile telephones that settled favorably at the end of fact discovery.  In the Matter of Certain Mobile Telephones and Modems (ITC).
  • Toyota in a litigation relating to vehicle telematics, which has been successfully stayed pending inter partes reexamination. In all three reexaminations, all asserted claims stand rejected. Fernandez v. Toyota (C.D. Cal.). 
  • Airbus in a litigation relating to fuel tank inerting systems, which was successfully stayed pending inter partes reexaminations of all asserted claims.  Mr. Berkowitz argued an appeal of one of the reexaminations before the Patent Trial and Appeal Board, wherein the Board affirmed the rejection of all asserted claims. Firepass v. Airbus (E.D.N.Y.). 
  • Sony in litigation resulting in summary judgment of invalidity based on lack of written description, which was affirmed by the Federal Circuit on appeal. Trans Video Electronics v. Sony Electronics (N.D. Cal.)
  • GE Healthcare (GEH) in a 38-day false advertising trial wherein the court rejected plaintiff Bracco’s $4 billion damages claim against GEH and held that Bracco had itself engaged in false advertising. Bracco Diagnostics v. Amersham Health (D.N.J.).
  • Toyota in district court actions and an ITC investigation, in which Toyota avoided the injunction on hybrid cars sought by plaintiff. Paice v. Toyota (E.D. Tex., ITC).  
  • Guidance Endodontics in multi-patent Section 337 investigation concerning endodontic instruments that settled favorably. In the Matter of Certain Endodontic Instruments (ITC).
Representative Matters

Additional Representative Matters

  • Toyota, as lead counsel in five inter partes review proceedings. Toyota’s petitions granted on all 50 combined claims across the five proceedings for which review was requested.
  • Toyota in multiple ongoing cases originally involving 24 patents. Multiple patents dismissed before claim construction. 3 of the remaining cases are currently stayed pending resolution of 12 inter partes review petitions filed by Toyota, all of which were instituted by the Patent Trial and Appeal Board.American Vehicular Sciences v. Toyota (E.D. Tex).
  • Elpida (current subsidiary of Micron Technology) in an eight patent semiconductor memory litigation involving district court actions and an ITC investigation, which was successfully settled after summary determination briefing and prior to a hearing. Intellectual Ventures v. Elpida (D. Del., W.D. Wash., ITC).
  • Toyota in a litigation relating to vehicle telematics, which has been successfully stayed pending inter partes reexamination. In all three reexaminations, all asserted claims stand rejected. Fernandez v. Toyota (C.D. Cal.). 
  • Airbus in a litigation relating to fuel tank inerting systems, which was successfully stayed pending inter partes reexaminations of all asserted claims.  Mr. Berkowitz argued an appeal of one of the reexaminations before the Patent Trial and Appeal Board, wherein the Board affirmed the rejection of all asserted claims. Firepass v. Airbus (E.D.N.Y.). 
  • GE Healthcare (GEH) in a 38-day false advertising trial wherein the court rejected plaintiff Bracco’s $4 billion damages claim against GEH and held that Bracco had itself engaged in false advertising. Bracco Diagnostics v. Amersham Health (D.N.J.).
  • Guidance Endodontics in multi-patent Section 337 investigation concerning endodontic instruments that settled favorably. In the Matter of Certain Endodontic Instruments (ITC).
Bar and Court Admissions
  • New York
  • U.S. District Court for the Eastern District of Michigan
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • Registered Patent Attorney: U.S. Patent and Trademark Office