Matthew Werber

Matthew WerberPartner

Mr. Werber advises and represents clients in complex matters involving patents, trademarks, copyrights, trade secrets, technology licensing, employment contracts, non-compete agreements, customs and importation, and more. On behalf of clients ranging from small businesses to multi-national corporations, he has litigated in federal jury trials and appeals in matters pertaining to a wide range of technologies, including cybersecurity, ecommerce, semiconductor mechanics, mechanical devices, medical devices, and water treatment systems, among many others. Mr. Werber has also litigated in numerous administrative proceedings before the United States International Trade Commission (“ITC”).

Registered to practice before the United States Patent and Trademark Office, Mr. Werber also represents clients in preparing and prosecuting patent applications and litigating before the Patent Trial and Appeal Board in Inter Partes Review proceedings.

Before embarking on a career in law, Mr. Werber worked as a software developer at Accenture LLP, formerly known as Andersen Consulting. There, he designed and developed enterprise software used by Fortune 500 power generation and delivery companies. Prior to joining SpencePC, Mr. Werber was a member of the litigation practice group of an international law firm headquartered in Chicago.

PUBLICATIONS

  • The Return of Patent Opinion Letters, Law360, January 2017
  • Just the Facts: Supreme Court Takes Aim At Treatment of Fact Questions in Two IP Decisions, IP Litigator, March/April 2015

ADMISSIONS

  • Bar of Illinois
  • United States Court of Appeals for the Federal Circuit
  • United States District Court for the Eastern District of Washington
  • United States District Court for the Northern District of Illinois
  • United States District Court for the Western District of Michigan
  • United States Patent and Trademark Office

EDUCATION

  • J.D., Chicago-Kent College of Law, Illinois Institute of Technology, 2005, (president, Intellectual Property Law Society; Chicago-Kent Merit Scholarship; Dean’s List)
  • B.S.E., University of Michigan, 1997

ACHIEVEMENTS

  • Selected by Super Lawyers to the 2015 Illinois Rising Stars list

REPRESENTATIVE EXPERIENCE

  • Represented Digital Design Corporation in litigating allegations of trade secret misappropriation and violations of anti-circumvention and anti-trafficking provisions of the Digital Millennium Copyright Act (DMCA) relating to audio speakers, public address systems and corresponding hardware components and embedded firmware. Trial team’s “second chair,” conducted examinations of key fact and expert witnesses over multiple days. Favorable resolution reached after two weeks of jury trial testimony.
  • Defended patent infringement allegations relating to online interactive mapping services on behalf of four nationally recognized retailers. Lead drafter of summary judgment motion papers. Argued summary judgment in open court on behalf of joint defense group (“JDG”) at hearing. Favorable resolution reached after grant of partial summary judgment in clients’ favor.
  • Represented Stryker Spine in litigating allegations of breach of non-compete, tortious interference, fraud and other business torts in a dispute between a medical device manufacturer and former distributorship. Deposed key fact witnesses and briefed summary judgment.
  • Defended patent infringement allegations relating to semiconductor chip packaging technology on behalf of Taiwan-based ChipMOS technologies. Lead attorney contact on behalf of client for coordinating and strategizing with technical expert and JDG in preparing non-infringement expert reports. Examined and defended technical and fact expert witnesses at depositions. Favorable resolution reached shortly after exchange of expert reports.
  • Defended allegations of patent infringement and unlawful importation in the USITC relating to USB flash drives and embedded firmware on behalf of Kingston Technology Company, Inc. Lead attorney for coordinating and strategizing with technical expert in preparing technical expert reports. Examined and defended technical and fact expert witnesses at depositions. All allegations against client withdrawn the day before trial.
  • Defended a trademark infringement lawsuit by Victoria’s Secret on behalf of a multi-state clothing retailer. Served as litigation team “second chair” in preparing motions and conducting discovery. Favorable resolution reached prior to trial.
  • Represented numerous internationally-recognized brands in trademark and anti-counterfeiting enforcement actions.
  • Represented and counseled clients in litigation and pre-litigation matters involving encryption, tokenization, and related cyber and computer security.
  • Defended allegations of patent infringement relating to e-commerce online shopping cart technology on behalf of HSN, Inc. Lead drafter of summary judgment motion papers on behalf of retailer client. All claims against client defeated on summary judgment.
  • Defended allegations of patent infringement and unlawful importation in the USITC relating to packaging of DRAM chips and memory cards. Participated and examined witnesses at 10-day bench trial. Final determination granted in favor of clients. Lead drafter of appellate brief filed with U.S. Court of Appeals for the Federal Circuit. Ruling favoring client affirmed on appeal.
  • Defended allegations of patent infringement and unlawful importation relating to luggage locks. Lead drafter of successful summary determination motion on behalf of 19 foreign luggage and luggage lock manufacturers. Investigation terminated after grant of summary determination in favor of clients.
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