As an inventor and former scientist, it gives me great pride and satisfaction to partner with my clients to help them protect and commercialize their ground-breaking innovations.
About Dr. Matthew
Matthew is an internationally recognized patent law practitioner in life sciences. He has extensive experience with representing startup, midsize and large privately and publicly held life sciences companies on patent-related matters and with respect to intellectual property aspects of investments, joint ventures, acquisitions, license and partnership negotiations and public offerings of securities.
Additionally, Matt represents clients in the areas of diligence, patent prosecution, patentability analysis, claim construction and validity, infringement analysis, freedom to operate, patent term extension, data exclusivity, patent exhaustion, appellate review, standing and damages.
Matt has experience in a wide array of technologies including: pharmaceuticals, biotechnology, medical devices, green technology, organic synthesis, inorganic chemistry, orthodontics, cosmetics, oncology, inflammation, ocular diseases, cardiovascular disease, dyslipidemia, Alzheimer's disease, depression, sexual dysfunction, orphan diseases, isotopically labeled drugs, antibodies, peptides, polymers, opioids, antidepressants, anti-platelet agents, drug delivery formulations, drug purification, aptamers, liposomes, pigments, catalysts, surfactants, sunscreens and ethnobotanicals.
Recent matters include:
- Biocompatibles: Acquisition of Brachy Sciences and affiliates World Wide Medical Technologies and Advanced Care Medical
- Cerenis Therapeutics: IPO
- Estee Lauder: Successfully defended patent and granted request to re-examine competitor patent in re-examination proceedings
- Gemin X Pharmaceuticals: Acquired by Cephalon for $225 million upfront cash payment and potential earn-out payments of up to $300 million
- Genentech: Acquired by Roche
- Nutrafol: Agreement to sell a majority stake to Unilever
- Ophthotech: IPO
- Ophthotech: $175 million financing round
- Sectoral Asset Management: Advised in connection with its Series C investment in Shockwave Medical
- Sectoral Asset Management: Advised in connection with its Series E preferred stock financing of Apellis Pharmaceuticals
- Therillia Development Company: Advised in connection with its Series A financing of PreciThera
Prior to joining the firm, Matt was a partner at Wilson Sonsini Goodrich & Rosati. He also practiced law at WilmerHale and Pennie & Edmonds. Before starting his legal career, he served as a research scientist with Unilever Research in Edgewater, New Jersey. In this position, he synthesized, characterized and evaluated sunscreens, artificial tanning agents, fluorescent whitening agents and oxidizing agents for skin and fabric care. Previously, Matt was a staff chemist at GE Corporate Research and Development. He is a joint inventor named on numerous US patents assigned to Lever Brothers or GE.
Select publications:
- Co-author, "Synthesis of Polyesters from Dimethyl Terephthalate, Ethylene Glycol, Poly(Ethylene Glycol) and 4,4-Bis(carbomethoxy)stilbene, and Characterization by ¹H and 2-D N.M.R." 33(22) Polymer 4862-65, 1992
- Co-author with P. Liberati, "Synthesis and Characterization of Poly(Vinyl 4-Methoxycinnamate)," 32(15) Polymer Communications 453-55, 1991
- Co-author with S. Danishefsky, "On the Use of the Imine-Diene Cyclocondensation Reaction in the Synthesis of Yohimbine Congeners," 26(48) Tetrahedron Letters 5983-86, 1985
- Co-author with S. Danishefsky, "On the Steric Course of the Reduction of 2-Alkoxy-4-Pyranones: A Remarkable Demonstration of Anomeric Control," 50 Journal of Organic Chemistry 3672-74, 1985
Select speaking engagements:
- "U.S. Patent Practice Update," The Institute of Patent and Trade Mark Attorneys of Australia, 2016 Annual Conference, Gold Coast, Queensland, Australia, April 14, 2016
- "Overcoming Obviousness Rejections in the United States," The Institute of Patent and Trade Mark Attorneys of Australia, 2016 Annual Conference, Gold Coast, Queensland, Australia,
April 15, 2016 - "IP Considerations for French Companies Doing Business in the U.S.," MedStartUp 2015, New York, October 28, 2015
- "Patent Law Basics," Weill Cornell Medical College of Cornell University, August 21, 2013
- "Developing a Patent Strategy: An Overview," W.P. Carey Program in Entrepreneurship and Management, Johns Hopkins University, Baltimore, Maryland, September 20, 2010, and September 23, 2009
- "IP: What Matters to Investors," Yale University StartUp Boot Camp 2009, Yale University, New Haven, Connecticut, November 3, 2009
- "Starting a Life-Sciences Company: What Researcher Entrepreneurs Need to Know," Memorial Sloan-Kettering Cancer Center, New York, October 21, 2009
- "StartUps: Venture Capital and Why Intellectual Property Matters," Making Medicine Series, Harvard Medical School, Boston, Massachusetts, September 30, 2009
- "University Inventors: Should You Start Your Own Company?" Invention 2 Innovation, Georgetown University, Washington, DC, September 24, 2009
- "IP and the Life Science Startup," Technology & Life Science Entrepreneurs Boot Camp 2009, Johns Hopkins School of Medicine, Baltimore, Maryland, February 12, 2009
- "Effectively Maintaining Patent Protection and Enforcement in Light of Upcoming Regulations," PharmaBiotech IP Summit, Philadelphia, May 28, 2008
- "Legal Consequences of KSR Int'l Co. v Teleflex Inc..," BIO Intellectual Property Counsels' Committee Meeting, Santa Monica, California, April 1, 2008
Education
Fordham University School of Law
JD, 1998
Yale University
PhD, Organic Chemistry, 1987
Tufts University
BS, Chemistry, 1981
Court admissions
US Supreme Court
US Court of Appeals for the Federal Circuit
US District Court for the Southern District of New York
US District Court for the Eastern District of New York
Rankings and accolades
Legal 500: Top Lawyer for Patent Prosecution
LMG Life Sciences: Life Science Star
Managing Intellectual Property: IP Star
Euromoney: Patent Law
New York Super Lawyers: Intellectual Property