Matthew Bernstein
- Taipei Office Managing Partner
- San Diego
- Taipei
- Los Angeles
Matt is a go-to patent litigator and trial lawyer for U.S. and international clients.
Matthew Bernstein has represented both plaintiffs and defendants in district courts throughout the U.S., as well as before the International Trade Commission (ITC) and the Patent Trial and Appeal Board (PTAB). He has tried seven patent jury cases in district court and two patent cases at the ITC and has handled dozens of inter partes reviews, including arguing at the oral hearings (trial) and at the federal circuit. Matt also frequently litigates disputes involving patent pools.
Matt's successful record on behalf of his clients includes negotiating early zero-dollar settlements, winning dispositive motions, and prevailing at trial and at the federal circuit. He works closely with his clients to find the most efficient, cost-effective ways to achieve their goals.
Matt's patent litigation successes include the following:
- Obtained jury verdict of infringement, willful infringement, validity, and full damages for Chinese LED lighting company in the U.S. District Court for the Western District of Texas (Waco Division).
- Obtained summary judgment of no infringement for global virtual reality hardware manufacturer in the U.S. District Court for the Northern District of California.
- Obtained summary judgment of invalidity on all asserted patents for streaming and video hardware company in the U.S. District Court for the Western District of Texas (Waco Division).
- Successfully defended a software company in the second-largest patent infringement case in U.S. history.
- Successfully defended Taiwanese handset manufacturer in ITC action, including obtaining a finding of no liability at hearing/trial and at the U.S. Court of Appeals for the Federal Circuit.
- Successfully invalidated a digital rights management patent at the motion to dismiss stage under Alice / 101 for three of the largest streaming companies and successfully affirmed the decision at the Federal Circuit.
- Obtained zero-dollar dismissals with prejudice for clients in the U.S. district courts for the Eastern District of Texas, District of Delaware, Southern District of Texas, Southern District of California, Western District of Washington, and District of Minnesota.
- Invalidated all challenged claims of five audio patents through inter partes reviews and successfully affirmed the PTAB's decision at the Federal Circuit.
- Obtained stipulated judgment of noninfringement for two streaming clients in the District of Delaware following a successful early Markman hearing.
- Obtained a jury verdict of infringement, willful infringement, significant damages, and validity against a major semiconductor company. Subsequently obtained a permanent injunction, enhanced damages, and attorneys' fees from the district court.
- Obtained a jury verdict on liability and significant damages for a computer hardware company. Subsequently obtained injunction, enhanced damages, and attorneys' fees from the district court.
Matt represents clients spanning numerous technologies and industries, including semiconductors, computer software and hardware, mobile, electronics, LEDs, e-commerce, medical devices, media, automotive systems, weapons systems, and biotechnology. In addition to patent infringement, Matt also represents clients in commercial litigation, trademark, trade secret, trade dress, and copyright matters.
Areas of focus
Industries
Services
Education & Credentials
Education
- The George Washington University Law School, J.D., 1998
- Tufts University, B.A., 1995
Bar and Court Admissions
-
California
-
Taiwan, Foreign Legal Affairs Attorney
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the Central District of California
- U.S. District Court for the Northern District of California
- U.S. District Court for the Southern District of California
- U.S. District Court for the Eastern District of Texas
- Supreme Court of the United States
- U.S. District Court for the Western District of Texas
Related Employment
- Fish & Richardson P.C., San Diego, CA, Partner
- DLA Piper (formally Gray Cary Ware & Freidenrich), San Diego, CA, Associate
- United States Agency for International Development, Washington, D.C., Law Clerk
Professional Recognition
Listed in Intellectual Asset Management Patent 1000, 2022-2024
Recognized as a leader in Patexia’s Patent Litigation Intelligence Report, 2021
Named in Best Lawyers in America: Commercial Litigation; Litigation - Intellectual Property; Litigation - Patent, 2015-2024; Patent Law, 2024
Named in Super Lawyers: Intellectual Property, 2013-2024
Named in San Diego Business Journal's, Best of the Bar, 2014-2017
Named a "Top Attorney" (Intellectual Property Litigation) in San Diego by the San Diego Daily Transcript, 2007-2013, 2015; San Diego Top Attorney Emeritus in 2014
Recipient of the Wiley W. Manuel award for Pro Bono Service
Impact
Professional Leadership
- State Bar of California
- San Diego County Bar Association
- Fellow, American Bar Foundation
- American Bar Association
- Fellow, American Bar Foundation
Insights
News
Professional Experience
Patent Litigation
Advanced Audio Devices, LLC v. HTC America, Inc.
U.S. District Court for the Northern District of Illinois
Lead counsel for HTC America in patent litigation related to audio playlists.
Agis Software Development, LLC v. HTC Corporation
U.S. District Court for the Eastern District of Texas
Lead counsel for HTC in a patent case related to mapping location services.
Alphatec Spine, Inc. v. Theken Spine LLC, et al.*
U.S. District Court for the Southern District of California
Lead counsel for patent holder Alphatec Spine in patent litigation related to cervical plate and fixation systems. The case favorably settled.
Alphatec Spine, Inc. v. X-Spine Systems, Inc.*
U.S. District Court for the Southern District of California
Lead counsel for patent holder Alphatec Spine in patent litigation related to cervical plate and fixation systems.
Ameranth, Inc. v. Starbucks Corp.
U.S. District Court for the Southern District of California
Lead counsel for Starbucks in patent litigation related to online menu generation and mobile payment.
Anonymous Media Research Holdings, LLC v. Roku, Inc.
U.S. District Court for the Western District of Texas (Austin Division)
Lead counsel for Roku, Inc. in patent litigation related to automatic content recognition technology.
ATEN International Company, Ltd. v. Belkin Corporation
U.S. District Court for the Central District of California
Counsel for ATEN in patent litigation related to KVM switches.
Barkan Wireless Access Technologies, L.P. v. T-Mobile US, Inc. et al.
U.S. District Court for the Eastern District of Texas
Lead counsel for T-Mobile in a patent case related to wireless networking.
Bradium Technologies LLC v. Microsoft Corporation
U.S. District Court for the District of Delaware
Lead counsel for Microsoft in patent case related to mapping software.
Chinook Licensing DE, LLC v. Hulu, LLC
U.S. District Court for the District of Delaware
Lead counsel for Hulu in patent litigation related to online recommendations.
Clouding IP, LLC, v. Amazon.com, Inc. and Amazon Web Services, LLC
U.S. District Court for the District of Delaware
Counsel for Amazon in multiple patent case related to cloud computing.
Clouding IP, LLC, v. Dropbox, Inc.
U.S. District Court for the District of Delaware
Counsel for Dropbox in multiple patent case related to cloud computing.
Clouding IP, LLC, v. Microsoft Corporation
U.S. District Court for the District of Delaware
Lead counsel for Microsoft in 15 patent case related to cloud computing.
Clouding IP, LLC, v. Rackspace Hosting, Inc., et al.
U.S. District Court for the District of Delaware
Counsel for Rackspace in multiple patent case related to cloud computing.
Compression Technology Solutions LLC v. CA. Inc., et al.
U.S. District Court for the Eastern District of Missouri
Lead counsel for Quest Software in patent litigation related to data compression.
Crossroads Systems, Inc. v. Chaparral Network Storage, Inc.*
U.S. District Court for the Western District of Texas
Federal Circuit Court of Appeals
Represented Crossroads Systems in patent litigation jury trial related to storage routers.
Crossroads Systems, Inc. v. Pathlight Technology, Inc.*
U.S. District Court for the Western District of Texas
Represented Crossroads Systems in patent litigation jury trial related to storage routers.
Deepwell IP LLC v. MediaTek Inc.
U.S. District Court for the Eastern District of Texas (Marshall Division)
Lead counsel for MediaTek in four patent cases related to semiconductor adaptive body bias capability technology.
Digital Development Corp. v. Hewlett-Packard Co.*
U.S. District Court for the Northern District of California
Defended Hewlett-Packard in patent litigation related to computer data integrity.
Digital Media Technologies, Inc. v. Amazon, Netflix, and Hulu
U.S. District Court for the Northern District of Florida
Lead counsel for Amazon, Netflix, and Hulu in cases related to DRM technology; won motion to dismiss on Alice / 101 grounds with invalidity decision affirmed by Federal Circuit.
Display Technologies, LLC v. HTC America, Inc.
U.S. District Court for the Western District of Washington
Lead counsel for defendant HTC America in a single patent case before Judge Jones involving NFC and Bluetooth wireless connectivity. Case dismissed with prejudice.
e.Digital Corporation v. Intel Corporation
U.S. District Court for the Southern District of California
Counsel for Intel in patent litigation related to flash memory.
e-Watch, Inc., et al. v. Apple, Inc., et al.
U.S. District Court for the Eastern District of Texas
Lead counsel for HTC America and HTC Corp. in patent litigation related to mobile image systems.
Electronic Scripting Products, Inc. v. HTC America, Inc., et al.
U.S. District Court for the Northern District of California
Lead counsel for HTC America in a patent case related to virtual reality technologies.
Figa v. HTC Corporation
U.S. District Court for the District of Massachusetts
Lead counsel for HTC in patent litigation related to caller-id functionality on mobile phones.
FlashPoint Technology Inc. v. HTC Corporation, et al.
U.S. District Court for the District of Delaware
Counsel for HTC in patent litigation concerning 10 patents related to mobile technologies; pending.
FlashPoint Technology Inc. v. HTC Corporation, HTC America Inc., et al.
U.S. International Trade Commission
Counsel for HTC in patent litigation concerning camera functionality in smart phones; win at trial and initial ID. ITC proceeding 337-TA-726
Flexiworld Technologies, Inc. v. Roku
U.S. District Court for the Western District of Texas (Waco Division)
Lead counsel for Roku in 14 patent litigation (4 cases) related to video technologies; pending.
Freedom Patents LLC v. Hisense Company Ltd., et al.
U.S. District Court for the Eastern District of Texas (Sherman Division)
Lead counsel for Hisense in three patent case related to WiFi technology.
Fujinon Corporation v. HTC Corporation and HTC America Inc.
U.S. District Court for the Southern District of Texas
Counsel for HTC in patent litigation concerning optical lens structures found in cellular phones; pending.
Håkan Lans and Uniboard Aktiebolag v. Hewlett-Packard Co.*
U.S. District Court for the District of Columbia
Federal Circuit Court of Appeals
Defended Hewlett-Packard in patent litigation related to digital graphics.
InMotion Imagery Technologies, LLC v. Cyberlink.com Corp. d/b/a Texas Cyberlink Corp
U.S. District Court for the Eastern District of Texas
Lead counsel for Cyberlink in patent litigation related to video indexing system.
In the Matter of Certain Movable Barrier Operator Systems and Components Thereof, U.S. International Trade Commission Investigation No. 337-TA-1118
Lead counsel for Respondents Nortek Security & Control LLC f/k/a Linear, LLC, Nortek, Inc., and GTO Access Systems, LLC in a three-patent case before ALJ McNamara concerning garage door and gate openers; pending.
Jiaxing Super Lighting Electric Appliance Co., Ltd. et al. v. CH Lighting Technology Co., Ltd.
U.S. District Court for the Western District of Texas (Waco Division)
Lead counsel for Chinese LED tube lamp manufacturer; obtained jury verdict of infringement, validity, willful infringement, and full damages on the three asserted patents following jury trial; pending.
Jiaxing Super Lighting Electric Appliance Co., Ltd. et al. v. Current Lighting Solutions, LLC D/B/A GE Current
U.S. District Court for the Western District of Texas (Waco Division)
Lead counsel for Chinese LED tube lamp manufacturer; obtained jury verdict of infringement, validity, willful infringement, and full damages on the three asserted patents following jury trial; pending.
Largan Precision, Company Ltd. v. Fujinon Corporation
U.S. District Court for the Northern District of California
Counsel for Largan in patent litigation concerning optical lens structures; dismissed.
LBS Innovations, LLC v. Aaron Brothers, Inc., et al.
U.S. District Court for the Eastern District of Texas
Lead counsel for Adams Golf in patent litigation related to online store locators.
LBS Innovations LLC v. BP America Inc., et al.
U.S. District Court for the Eastern District of Texas
Lead counsel for McDonald's, Starbucks, Target, Costco, U.S. Bank and others in patent litigation related to online store locators.
LBS Innovations, LLC v. Sally Beauty Supply LLC, et al
U.S. District Court for the Eastern District of Texas
Lead counsel for Sally Beauty in patent litigation related to online store locators.
Lemaire Illumination Technologies, LLC v. HTC Corporation
U.S. District Court for the Eastern District of Texas
Lead counsel for HTC Corporation in patent litigation related to controlling and powering a solid-state light source such as a light-emitting diodes (LED).
Lennon Image Technologies, LLC v. Chanel, Inc.
U.S. District Court for the Western District of Texas (Waco Division)
Lead counsel for Chanel in patent litigation related to virtual try-on technology.
Lennon Image Technologies, LLC v. Target Corporation
U.S. District Court for the Eastern District of Texas
Lead counsel for Target in patent litigation related to virtual try-on technology.
Lodsys, LLC v. Hulu
U.S. District Court for the Eastern District of Texas
Lead counsel for Hulu in patent litigation related to online reviews.
Lucent Technologies v. Microsoft Corporation*
U.S. District Court for the Southern District of California
Federal Circuit Court of Appeals
Defended Microsoft in patent litigation jury trial related to audio encoders and decoders.
Microtune, L.P. v. Broadcom Corp.*
U.S. District Court for the Eastern District of Texas
Represented Microtune in patent litigation jury trial related to integrated TV tuners.
NFC Technology LLC v. HTC America, Inc. et al.
U.S. District Court for the Eastern District of Texas
Lead counsel for HTC America in patent litigation related to near field communications.
Nonend Inventions, N.V. v. Amazon.com, Inc., et al
U.S. District Court for the Eastern District of Texas
Counsel for Amazon in patent case related to streaming and sharing media.
Nonend Inventions, N.V. v. Microsoft Corporation, et al.
U.S. District Court for the Eastern District of Texas
Lead counsel for Microsoft, HTC America, HP, and Fujitsu in patent case related to media streaming.
Orientview Technologies LLC, v. Just Fabulous, Inc.
U.S. District Court for the District of Delaware
Lead counsel for Just Fabulous in patent litigation related to online marketing.
Orion IP LLC v. American Suzuki Motor Corp.*
U.S. District Court for the Eastern District of Texas
Defended American Suzuki Motor Corp. in patent litigation related to online advertising and online parts ordering.
Orostream LLC v. NHL Interactive Cyberenterprises, LLC
U.S. District Court for the Eastern District of Texas
Lead counsel for NHL Interactive in patent litigation related to distributing media content.
Orostream LLC v. Zuffa, LLC
U.S. District Court for the Eastern District of Texas
Lead counsel for Zuffa in patent litigation related to distributing media content.
Overland Storage, Inc., v. Qualstar Corporation
U.S. District Court for the Southern District of California
Lead counsel for Qualstar in patent litigation related to media libraries.
P2I Ltd. v. Favored Tech USA Corporation, et al.
U.S. District Court for the Northern District of California (San Francisco Division)
Lead counsel for Favored Tech. and GN Audio in a two patent case related to nanocoating technologies.
ParkerVision, Inc. v. MediaTek Inc. and MediaTek USA Inc.
U.S. District Court for the Western District of Texas (Waco Division)
Lead counsel for MediaTek in three cases involving 10 patents related to RF semiconductor technology.
Perfect Corp. v. Lennon Image Technologies, LLC
U.S. District Court for the Western District of Texas (Waco Division)
Lead counsel for Perfect Corp. in declaratory judgment action related to virtual try-on technology.
Polaroid Corp. v. Hewlett-Packard Co.*
U.S. District Court for the District of Delaware
Defended Hewlett-Packard in patent litigation related to image enhancement algorithms.
Product Activation Corp. v. Autodesk, Inc.*
U.S. District Court for the Eastern District of Texas
Defended Autodesk in patent litigation related to software anti-piracy.
R&D Enterprises of San Jose, LLC v. Derma Art Technologies, Inc., One Ink Seven LLC, et al.
U.S. District Court for the District of Minnesota
Lead counsel for Derma Art Technologies, Inc. and Painful Pleasures, Inc. in patent cases related to tattoo ink technology.
Rothschild Storage Retrieval Innovations, LLC. v. HTC Corporation, et al.
U.S. District Court for the Northern District of California
Lead counsel for HTC America and HTC Corp. in patent case related to distributing wireless images.
Sequal Technologies, Inc. v. Inogen, Inc.*
U.S. District Court for the Southern District of California
Represented patent holder Sequal in patent litigation related to portable oxygen concentrators. The case favorably settled.
SimpleAir, Inc., v. Microsoft Corporation, et al.
U.S. District Court for the Eastern District of Texas
Counsel for HTC in two patent case related to remote notification technology for mobile devices; plaintiff voluntarily dismissed claims against HTC.
Sovereign Peak Ventures, LLC v. Hisense Co., Ltd. et al.
U.S. District Court for the Eastern District of Texas
Lead counsel for Hisense in 7 patent and 4 patents cases relating to video coding and Wi-Fi technologies; pending.
Starbucks Corp. v. NeoMedia Technologies, Inc.
U.S. District Court for the Western District of Washington
Lead counsel for Starbucks in patent litigation related to QR codes.
StylePath, Inc. v. Just Fabulous, Inc.
U.S. District Court for the Central District of California
Lead counsel for Just Fabulous in patent litigation related to online marketing.
Synology Inc. v. Via Licensing Alliance LLC
U.S. District Court for the Northern District of California (San Francisco Division)
Lead counsel for Synology in declaratory judgment action alleging no breach of a patent pool license agreement.
The Chamberlain Group, Inc. v. Nortek Security & Control LLC
U.S. District Court for the Southern District of California
Counsel for Nortek Security & Control LLC f/k/a Linear, LLC in a three-patent case before Judge Janis L. Sammartino and Magistrate Judge Andrew G. Schopler concerning garage door and gate openers; pending.
Tierravision Inc. v. Microsoft Corporation
U.S. District Court for the Southern District of California
Lead counsel for Microsoft in patent litigation related to mobile mapping functionality.
Transcenic Inc. v. Google Inc., et al.
U.S. District Court for the District of Delaware
Lead counsel for Microsoft in patent litigation related to street level imagery.
TransVideo Electronics, Ltd. v. Hulu, LLC
U.S. District Court for the District of Delaware
Lead counsel for Hulu in patent litigation related to video distribution systems.
TransVideo Electronics, Ltd. v. Netflix, Inc.
U.S. District Court for the District of Delaware
Lead counsel for Netflix in patent litigation related to video distribution systems.
Treefrog Developments, Inc. d/b/a LifeProof v. Joy Factory, Inc.
U.S. District Court for the Southern District of California
Counsel for LifeProof in patent litigation related to iPhone cases.
Treefrog Developments, Inc. d/b/a LifeProof v. Klearkase, LLC, et al.
U.S. District Court for the Southern District of California
Counsel for LifeProof in patent litigation related to iPhone cases.
Treefrog Developments, Inc. d/b/a LifeProof v. Seidio, Inc.
U.S. District Court for the Southern District of California
Counsel for LifeProof in patent litigation related to iPhone cases.
TypeRight Keyboard Corp. v. Microsoft Corporation*
U.S. District Court for the Southern District of California
Defended Microsoft in patent litigation related to ergonomic keyboards.
Uniloc 2017 LLC, v. Netflix, Inc., et al.
U.S. District Court for the Central District of California
Lead counsel for Hulu, Netflix, and Roku in a patent case related to presenting audio and visual content on a computer or computer network; pending.
U.S. Silica Company v. Amberger Kaolinwerke Eduard Kick GmbH & Co. KG
U.S. District Court for the Eastern District of Texas
Lead counsel for German company (Amberger Kaolinwerke) in six patent case related to cool roofing technology; pending.
VDPP, LLC v. JVCKENWOOD USA Corporation
U.S. District Court for the Central District of California (Western Division)
Lead counsel for JVCKENWOOD in two patent case related to video and image processing.
z4 Technologies, Inc. v. Microsoft Corporation and Autodesk Inc.*
U.S. District Court for the Eastern District of Texas
Federal Circuit Court of Appeals
Defended Microsoft in patent litigation jury trial related to software anti-piracy.
Ziplink, Inc. v. Microsoft Corporation
U.S. District Court for the District of Connecticut
Lead counsel for Microsoft in patent litigation related to anti-spoofing and anti-spam technologies.
Ziplink, Inc. v. Time Warner Cable Inc.
U.S. District Court for the District of Connecticut
Lead counsel for Time Warner in patent litigation related to anti-spoofing and anti-spam technologies.
Intellectual Property Litigation
Dr. Seuss Enterprises, L.P. v. Soft Things, Inc.*
U.S. District Court for the Southern District of California
Represented Dr. Seuss Enterprises in trademark, trade dress and copyright litigation.
Lorillard Tobacco Co. v. B&L Liquor*
U.S. District Court for the Central District of California
Represented Lorillard Tobacco in litigation involving trademark and counterfeit.
Lorillard Tobacco Co. v. J&J Liquor*
U.S. District Court for the Central District of California
Represented Lorillard Tobacco in trademark and counterfeit litigation.
Metabolife International, Inc. v. OnTrack Wellness, Inc.*
U.S. District Court for the Southern District of California
Represented Metabolife International in trademark and trade dress litigation.
Microtune Inc. v. Broadcom*
U.S. District Court for the Western District of Texas
Represented Microtune in antitrust litigation.
Microtune Inc. v. Silicon Wave Inc.*
Superior Court of California, San Diego County
Represented Microtune in breach of contract litigation.
Orincon Corp. v. Intelligent Automation Corp.*
Superior Court of California, San Diego County
Represented Orincon in trade secret and unfair competition litigation.
* Prior Experience