Matt Samuel, a principal in the Twin Cities office of Fish & Richardson P.C., leads and tries patent litigation cases. He has successfully tried cases in key venues on the east and west coasts and in Minnesota. Mr. Samuel also counsels clients on patent due diligence considerations relating to freedom to operate and patent landscape studies, licensing, and patent enforcement. Mr. Samuel speaks regularly in the U.S. and in Japan on a variety of patent-related topics, including the ramifications of the America Invents Act.
Mr. Samuel’s clients are located in the U.S., Asia, and the Middle East. His many long-standing relationships are marked by his ability to bond with clients, a deep commitment to client care, and a propensity for creating imaginative and practical solutions. With a background in electrical and biomedical engineering, he has represented several of the world’s leading medical device companies, including Terumo and Fresenius. He also represents Orbimed Advisors, the world’s largest health care investment firm.
As a prominent member of the firm’s Japan practice, Mr. Samuel frequently travels to Japan, where he has developed strong relationships with Japanese companies, patent lawyers (BenGoshi), and patent agents (BenRishi) over many years. He has served as lead counsel for Japanese companies in both U.S. district courts and U.S. International Trade Commission (ITC) patent litigation in jurisdictions across the U.S. In 2011, Mr. Samuel spoke at the Joint Judicial Conference on Japan and U.S. Intellectual Property Rights held in Tokyo, a joint conference organized by the U.S. Court of Appeals for the Federal Circuit and the Japanese Intellectual Property High Court.
Mr. Samuel is also at the forefront of Fish & Richardson’s growing representation of Israeli companies, especially in the medical device and biotech areas. He has worked closely with several Israeli technology companies and venture funds on a variety of intellectual property matters, including intellectual property due diligence, development of comprehensive patent strategies, and U.S. patent litigation.
At the dawn of the e-commerce era, Mr. Samuel was lead counsel for Amazon Bookstore in its trademark infringement case against Amazon.com. The case was widely followed in the local and national press because of the contentiousness of the case and because it raised novel legal issues relating to the intersection of “traditional” trademark rights with rights developed in cyberspace.
Mr. Samuel’s experience in courtrooms throughout the U.S., together with his commitment to nurturing client relationships in the U.S. and internationally, set the stage for remarkable client service and outstanding results. His ability to connect and communicate is evident in his role as the “Invention Expert” on Twin Cities Live, an afternoon variety show on Minnesota’s ABC affiliate. Several of his segments can be seen here.
“PTAB Trials: Tips and Strategies”, NYIPLA Patent Litigation Committee (January 2015).
Patent Cases, Medical Devices
Harvest Technologies Corp. v. Thermogenesis Corp. and Ceiling Technologies LLC (D.Del.) – Represented Harvest Technologies in a case involving point-of-care cell separation technology. Case successfully settled after winning key claim construction issues.)
Airmid IP v. Terumo Cardiovascular Systems, Inc. (E.D. Mich.) – Lead counsel for defendant Terumo in patent case involving Terumo’s ROCSafe perfusion circuit. Case pending.
B. Braun Melsungen AG, & B. Braun Medical Inc. v. Terumo Medical Corporation & Terumo Corporation (D. Del.) – Lead counsel for defendant Terumo in a patent case involving the Terumo Surshield Safety I.V. Catheter. Co-lead counsel at trial in which jury found non-infringement or invalidity on 16 of 17 asserted claims. Case settled favorably.
Maquet v. Terumo (N.D. Cal.) and In the Matter of Certain Vein Harvesting Surgical Systems and Components Thereof (ITC) – Lead counsel for defendant Terumo in district court and ITC cases involving Terumo’s VirtuoSaph Endoscopic Vein Harvesting System. Both cases settled favorably.
Cobe Cardiovascular, Inc., and Sorin Group Deutschland GMBH v. Terumo Cardiovascular Systems Corporation (D. Minn.) – Lead counsel for defendant Terumo Cardiovascular in a patent case involving heart-lung machines. Case settled favorably.
Fresenius USA Inc. v. Baxter International Inc., et al. (N.D. Cal.) – Trial counsel for Fresenius in a patent case involving four patents relating to hemodialysis machines. Jury returned verdict for Fresenius invalidating all asserted claims on all patents. Baxter sought $87 million in damages and an injunction barring Fresenius from selling its “Fresenius 2008K” hemodialysis machine.
Baxter Healthcare Corp., and DEKA Corp. v. Fresenius Medical Care Holdings Inc., et al. (N.D. Cal.) – Patent case involving peritoneal dialysis cyclers in which Baxter and DEKA asserted nine patents against the Fresenius Liberty Cycler, including several patents on which world famous inventor Dean Kamen was lead inventor. Obtained dismissal of seven patents before trial and jury verdict of of non-infringement on two remaining patents.
Pacesetter, Inc. v. Cardiac Pacemakers, Inc. – (D. Minn.) Represented Pacesetter, Inc., a division of St. Jude Medical Products, in a patent infringement action involving implantable pacemakers and defibrillators resulting in a jury verdict of infringement and damages in the amount of $9.675 million.
Aearo Company and Cabot Safety Intermediate Corporation v. Minnesota Mining and Manufacturing – (S.D. Ind.) Defeated a preliminary injunction which included a two-day evidentiary hearing. Thereafter, defended 3M in a patent infringement case in which plaintiffs asserted two design patents and one utility patent against certain 3M hearing protection products. Obtained summary judgment of non-infringement on one patent and shortly thereafter case settled favorably on the remaining two patents.
Patent Cases, Mining and Heavy Equipment
Leroy G. Hagenbuch v. Komatsu America Incorporated (C.D. Ill.) – Co-lead counsel for defendant Komatsu in nine-patent case involving Hagenbuch patents relating to on-board weighing systems on mining equipment. Case pending.
Condatis LLC v. ARINC Inc., et al. (E.D. Tex.) –Counsel for Komatsu in patent case involving Komatsu’s Komtrax and Komtrax Plus fleet management systems. Case settled favorably.
Innovative Global Systems v. Volvo Construction Equipment North America, et al. (E.D. Tex.) – Counsel for Komatsu in patent case involving Komatsu’s Komtrax and Komtrax Plus fleet management systems. Case settled favorably.
Patent Cases, Mechanical
Cutsforth Products, Inc. v. Fulmer Company and Westinghouse Air Brake Technologies Corporation (D. Minn) – Lead counsel for plaintiff Cutsforth in patent case involving patents on Cutsforth’s EASYChange Removable Brush Holder. Case pending.
Tower Reinforcement, Inc. v. Crown Castle et al (S.D. Ind.) – Lead counsel for plaintiff Tower in patent case involving patents on reinforcing systems for monopole towers. Case pending.
Rosen’s v. Van Diest Supply, West Central, and Pro Tech (D. Minn.) – Lead counsel for Rosen’s in patent case involving particulate matter dispensers. Case settled favorably.
Patent Cases, Electrical and Computer Technology
Mosaid v. Digi International, Inc. et. al. (E.D. Tex.) – Lead counsel for defendant Digi in patent case involving certain Digi WiFi products. Case settled favorably.
Advanced Processor Technologies LLC, v. Digi International, Inc. et al. (E.D. Tex.) – Lead counsel for defendant Digi in patent case involving patents relating to data processors having an address translation buffer with variable page sizes. Case settled favorably.
Universal Surveillance v. Sensormatic Electronics (S.D. Fla.) – Lead counsel for patentee, Sensormatic, in patent case involving electronic article surveillance tags. Jury verdict of infringement. Verdict affirmed on appeal.
Intergraph Hardware Technologies v. Texas Instruments (E.D. Tex.) – Counsel for Texas Instruments in multi-patent case involving parallel processing microprocessors. Case settled favorably.
Seikoh Giken v. Domaille Engineering (D. Del.) – Lead counsel for Domaille Engineering in patent infringement case involving optical fiber polishers. Case settled favorably.
Telular v. Vox2 – (N.D. Ill.) Counsel for Vox2 in patent litigation involving cellular telephone interface technology. Defeated motion for preliminary injunction with Court finding all four preliminary injunction factors favored Vox2. Case settled favorably.
E-Tek Dynamics Inc. v. Oplink Communication – (N.D. Cal.) Represented Oplink in defense of multiple patent infringement claims involving fiber optic DWDM technology. Case settled favorably.
Chorum Technologies v. Oplink Communication, et al. – (N.D. Tex.) Represented Oplink in defense of multiple patent infringement claims involving fiber optic DWDM technology. Case settled favorably.
Patent Cases, Consumer Products
Mann Design v. Bounce, Inc. (D. Minn.) – Counsel for Bounce, Inc. in patent litigation involving chewable pet toys. Successfully obtained transfer of case to Bounce, Inc.’s home venue. Case settled favorably shortly thereafter. (Opinion published at 138 F. Supp. 1174.)
Trademark, Trade Secret, and Trade Dress Cases
Amazon Bookstore Cooperative v. Amazon.com (D. Minn.) – Lead counsel in a trademark infringement case brought by Amazon Bookstore Cooperative, an independent Minneapolis bookstore, against Amazon.com. The lawsuit was one of the first cases to involve a dispute over trademark rights between a traditional “brick and mortar” retailer and a pure e-commerce retailer. As such, it was widely followed both within the intellectual property world and the media as a whole. Case successfully settled (named the best settlement of 1999 by Minneapolis/St. Paul Citypages newspaper).
Alcatel USA v. Cisco Systems (D.C. Cir.) – Counsel for Alcatel USA in theft of trade secret case involving digital cross-connects for telecommunications networks. Case settled favorably.
Rave Sports v. Overtons, Inc. and Aqua Sports Technology, Inc. – (D. Minn.) Lead counsel for Rave Sports against Overtons in a Lanham Act unfair competition action involving water trampolines. Case settled favorably.
Additional Education and Training
Graduate of the National Institute for Trial Advocacy Intensive Trial Skills Program (2000 National Program held in Boulder, Colorado).
Selected for inclusion in Best Lawyers in America for IP litigation 2014-2021.
“Matt understands how competitive threats, breakthrough technologies, process innovation, and changing markets impact business success, which are a few of the reasons why I’ve sought Matt’s trustworthy IP counsel for many years. Matt is a strategic thinker, and like a great chess player who sees many moves ahead, he has the ability to strike the right balance between analysis and intuition. In the courtroom or the boardroom, Matt is a commanding presence, an intrepid warrior waging war on behalf of his client.”
“Matt has been great from the beginning. He is always responsive, courteous, and takes the time to help us get comfortable with where things are at, and why we are doing what we are.”
“Mathias Samuel is extremely knowledgeable and I think he really goes out of his way to accommodate his clients.”
J.D. with honors, Order of the Coif, University of San Diego School of Law (1994)
B.S. Tau Beta Pi, Eta Kappa Nu, Electrical Engineering, North Dakota State University (1991)
- U.S. Patent and Trademark Office 1996
- Minnesota 1996
August 15, 2018
47 Fish Attorneys Named to The Best Lawyers in America® 2019 List
November 20, 2017
Fish & Richardson Wins Federal Circuit Mandamus Petition to Vacate Venue Transfer for Cutsforth, Inc.
April 8, 2016
Fish & Richardson Obtains Full Federal Circuit Reversal for Cutsforth, Inc. After Faulty Inter Partes Review
January 29th, 2015 | 5:30 pm EST
"PTAB Trials: Tips and Strategies" hosted by NYIPLA Patent Litigation Committee
August 23rd, 2012
May 16th, 2012
Patents on Tap, Twin Cities Series
March 19th, 2014
You can get there from here: practical tips for protecting your intellectual property in emerging markets
March 9th, 2011
US and European Patent Law Conference 2008
May 14th, 2013
Patently Relevant: Recent Developments in Patent Litigation
June 12th, 2014
MNACCA 3rd Annual In-House Counsel Conference
June 12th, 2013
Israeli Life Sciences and Biomed Industry Conference
November 12th, 2012
Recent Developments in U.S. Patent Law 2012