Matias Ferrario

Matias Ferrario focuses his practice on intellectual property matters, including patent litigation, due diligence, prosecution and general counseling. He is registered to practice before the United States Patent and Trademark Office. Mr. Ferrario has experience in complex litigation matters involving trade secret, licensing, contract and business tort disputes.

He has also participated in a variety of due diligence matters, licensing negotiations and settlement negotiations. His practice also includes providing freedom-to-operate, invalidity and non-infringement opinions.

Mr. Ferrario has participated in cases in multiple federal courts, including the District of Columbia, District of Delaware, Eastern District of Texas and Eastern District of Virginia.

He has also participated in trials and dispositive motion hearings, and has been involved in all aspects of pre-trial discovery, including motion practice, expert witness preparation, and conducting and defending fact and expert depositions.

Mr. Ferrario has substantive experience in a number of areas including biotechnology, medical devices, pharmaceuticals, semiconductors, call processing systems, business methods, software systems and mechanical devices.

Prior to joining the firm, he was founder and member of a boutique intellectual property law firm in Washington, D.C. He is currently active in pro bono and public service matters. Mr. Ferrario speaks Spanish.

Experience:

• Provide counseling to leading specialty catalog and retail company relative to intellectual property and other contractual issues arising from various licenses and service contracts.
• The firm served as lead counsel on behalf of a global supplier of IT solutions for banks. Disc Link Corp. (“Disc Link”), a subsidiary of the patent holding company Acacia Research Technologies (“Acacia”), filed a patent infringement action against numerous defendants, including our client. The plaintiff asserted that our client infringed one of their U.S. patents. According to their allegations, the patent-in-suit relates to products distributed on portable, read-only storage devices—such as CD-ROMS—that include a link to retrieve additional data via the internet. The parties settled.
• Represent a clinical laboratory services provider in matters related to intellectual property issues arising in connection with due diligence projects, acquisitions, and divestitures, including: freedom to operate counseling, licensing, and other intellectual property counseling services.
• The firm served as lead counsel on behalf of a clinical laboratory services provider, plaintiff, in a lawsuit pending in the Eastern District of North Carolina against defendant. The plaintiff alleged that defendant infringes certain patents exclusively licensed to plaintiff. The patents in the lawsuit related to methods of testing pooled blood samples, and were placed into reexamination by the defendant. The U.S. Patent and Trademark Office (USPTO) reexamined the patents. The court stayed the infringement action pending resolution of the reexaminations by the USPTO. The USPTO confirmed the patentability of each of the challenged claims. Case settled.
• The firm served as lead counsel and defended a California-based boutique, high-end, pet lifestyle company, in a patent suit relating to car pet seats. The litigation proceeded through early stages of discovery before we reached a favorable settlement.
• Successfully defended Victorinox Swiss Army, Inc. against claims of infringement of a patent related to a geographic search function in the Eastern District of Texas. Matter settled. GeoTag Inc. v. Where 2 Get It Inc. et al., No. 11-0175 (E.D. Tex. filed Mar. 15, 2011).
• The firm served as lead counsel on behalf of a health care company in the Southern District of Illinois against charges of patent infringement by Document Generation Corporation, an Acacia subsidiary. The lawsuit relates to electronic medical record technology. Defendants in the case were successful in persuading the U.S. Patent and Trademark Office to reexamine the patent in suit. The litigation is currently stayed pending the outcome of the reexamination proceeding.
• Reebok against Respondents RBX Active in patent infringement and importation investigation related to athletic shoe sole functionality. Case favorably settled after Respondents agreed to cease importation. In re Certain Athletic Footwear, U.S. ITC Investigation No. 337-TA-1018.
• Lead counsel on behalf of Cox Communications and EarthLink in a suit filed by Ronald A. Katz Licensing Technology in the U.S. District Court for the Eastern District of Texas. The suit claims patent infringement stemming from our clients’ use of automated telephone processing systems. The action was consolidated for pre-trial proceedings with other suits brought by Katz against various other defendants in the Central District of California, with Judge Klausner presiding over discovery and other pre-trial matters. Ronald A. Katz Tech. Licensing, LLP v. Cox Commc’ns, No. 07-2299 (E.D. Tex. filed April 6, 2007); In re Katz Interactive Call Processing Patent Litig., No. 07-01816 (E.D. Tex. filed July 7, 2008) and Ronald A. Katz Tech. Licensing, LLP v. EarthLink, Inc., No. 07-2235, No. 07-2299 (E.D. Tex. filed April 9, 2007); In re Katz Interactive Call Processing Patent Litig., No. 07-01816 (E.D. Tex. filed July 7, 2008).

Education:

• Case Western Reserve University, J.D. (2000) cum laude
• Wake Forest University, Post Baccalaureate Graduate Studies in Molecular Biology (1995)
• University of Michigan, B.S., Cellular and Molecular Biology (1994)

Admissions:

• North Carolina (2008)
• District of Columbia (2001)
• Virginia (2000)

Court Admissions:

• U.S. Patent and Trademark Office
• U.S. District Court for the Eastern District of Virginia
• U.S. District Court for the District of Columbia
• U.S. District Court for the Eastern District of North Carolina
• U.S. District Court for the Middle District of North Carolina
• U.S. District Court for the Western District of North Carolina