Matias Ferrario focuses his practice on intellectual property matters, including patent litigation, due diligence, prosecution and general counseling. Mr. Ferrario 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. Mr. Ferrario has also participated in a variety of due diligence matters, licensing negotiations and settlement negotiations. Mr. Ferrario's 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. Professional & Community Activities Hispanic League, Board of Directors North Carolina Bar Association, Member Industries Chemical; Health & Life Sciences; Biotechnology; Health Care; Pharmaceuticals; Technology & Software; Telecommunications Experience Patent litigation for car pet seats, 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. Intellectual property counseling to leading specialty catalog and retail company, Provide counseling to leading specialty catalog and retail company relative to intellectual property and other contractual issues arising from various licenses and service contracts. Patent litigation for a clinical laboratory services provider pending in the Eastern District of North Carolina, The firm serves 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 alleges that defendant infringes certain patents exclusively licensed to plaintiff. The patents in the lawsuit relate 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. Patent litigation for global supplier of IT solutions for banks, The firm served as lead counsel on behalf of a global supplier of IT solutions for banks. A subsidiary of a patent holding company filed a patent infringement action against numerous defendants. 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. Ronald A. Katz Technology Licensing LLP v. Cox Communications; In re Katz Interactive Call Processing Patent Litigation; Ronald A. Katz Technology Licensing LLP v. EarthLink Inc., 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). Intellectual property related matters for a clinical laboratory services provider, 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. Patent litigation for health care company, 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. *Experience gained by attorney prior to joining Kilpatrick Townsend Publications 20 December 2010, Method of Treatment Claims Alive and Well, Legal Alerts 01 November 2009, The Effective Use of Patent Law Experts
Source: American Bar Association Intellectual Property Litigation Newsletter, Articles 18 September 2009, Medical Treatment and Diagnostic Claims are Patentable, Legal Alerts 24 August 2007, The Federal Circuit Changes the Rules of Willful Patent Infringement and Patent Opinions, Legal Alerts News 19 March 2010, Kilpatrick Stockton's Matias Ferrario Elected to Hispanic League Board of Directors, News Releases |