Duane H. Mathiowetz

Duane H. Mathiowetz

Partner
San Francisco, CA
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ABOUT

A mechanical engineer turned patent attorney and highly effective intellectual property litigator who is consistently ranked as a California Super Lawyer, Duane has advised and helped clients ranging from Series B to $4 billion companies protect their intellectual property and mitigate liability matters from product development through commercialization. For over 30 years, Duane’s IP and commercial litigation practice has continued to evolve as he has specialized in plaintiff and defense-side technology-centric litigation including patent, trademark, copyright, unfair competition, and trade secret matters.

Duane has served as lead, support, or sole counsel on multimillion-dollar patent, trademark, and commercial cases, including 15 jury trials and ITC proceedings, from case inception through appeal, 500+ depositions and witness examinations, 20+ mediations and arbitrations (certified mediator / arbitrator since 2016), 5 matters before BPAI and PTAB, and lead attorney on 10+ appeals, including 3 oral arguments, before the Federal Circuit Court of Appeals. His expertise spans multiple industries including high tech, electronics, communications, medical device, mechanical, and manufacturing.

 

ADMISSIONS

  • California 1983

LANGUAGE

  • English

EDUCATION

University of San Francisco
J.D
Stanford University
M.S. in Mechanical Engineering
University of Minnesota
B.S. in Mechanical Engineering

AWARDS

Certified as Arbitrator (2016) and Mediator (2017)
Named Northern California Super Lawyer (Patent Litigation) multiple years running through 2021
Honored by Federal Circuit Bar Association for pro bono work on behalf of veterans


ADMISSIONS

  • California 1983

LANGUAGE

  • English

EDUCATION

University of San Francisco
J.D
Stanford University
M.S. in Mechanical Engineering
University of Minnesota
B.S. in Mechanical Engineering

AWARDS

Certified as Arbitrator (2016) and Mediator (2017)
Named Northern California Super Lawyer (Patent Litigation) multiple years running through 2021
Honored by Federal Circuit Bar Association for pro bono work on behalf of veterans

RELEVANT EXPERIENCE

Duane has spent his career litigating a wide range of IP related matters spanning across many industries. Most recently, he was a partner at a boutique commercial litigation law firm where he managed their tech-related IP litigation matters including the complex defense of a start-up in a patent infringement and trade secret misappropriation defense case; and served as co-counsel on a multimillion-dollar post-arbitration settlement on a commercial/employment litigation action.

He was also a partner at Foley & Lardner where he represented start-ups and SMBs in patent, trademark, copyright, and unfair competition matters involving consumer and commercial products, including IP infringement resolution for a cannabis start-up’s distillation tech; patent, trademark, and copyright settlement for a Hong Kong-based online retail and consumer products company; and patent monetization advising for the inventor of a machine learning-based text-to-speech tool, and the inventor of a dual-factor authentication technology.

At LeClairRyan LLP, he litigated patent and copyright matters for domestic and foreign companies, including successful representation of a Taiwanese optical image-sensing technology company against a $100M+ claim in district court, and concurrently prosecuted PTAB validity challenge and filed a unique legitimacy challenge to the plaintiff’s patent assignment in bankruptcy court; and defended a German start-up in a wind tunnel technology patent infringement case.

At Schiff Hardin LLP Duane represented an app / software development firm against a predatory patent licensing company seeking $100M+ in a multi-party mobile-ordering patent dispute; filed a plaintiff action on behalf of a $500M utility boom truck manufacturer on a trade secret misappropriation and wrongful claim of inventorship; and secured early, no-payment dismissal of IP/breach of contract claims relating to deployment of an internet reservations software.

Duane’s areas of expertise include:

Patent litigation and counseling, patent monetization, trademark, copyright, unfair competition, and trade secret litigation, commercial litigation, mediation and arbitration of technology disputes.


REPRESENTATIVE MATTERS

David Senescu v. Keating, Inc., JAMS Abitration, 2018-2019. Represented defendant in employment/breach of contract and fiduciary duty litigation. Multimillion dollar settlement for defendant on counterclaims.

AlterG, Inc. v. Boost Treadmills, LLC, CAND, 2018 – 2020t. Represented defendants, including founder of plaintiff, accused of patent infringement, trade secret misappropriation, and breach of contract relating to development of “unweighting” treadmills.

Elliot Kremerman v. Open Source Steel, LLC, WAWD, 2017-2018. Represented defendant accused of infringing patents and trade dress related to cannabis distillation equipment. Reached very favorable settlement upon filing counterclaims alleging unfair business practices by plaintiff.

Meta Company v. Zhangyi Ahong, et al., CAND, 2017. Represented developer of augmented reality glasses accused of trade secret misappropriation and breach of contract; obtained very favorable settlement allowing continued development and sale.

WaveStudio v. Amadeus North America, Inc., et al., NYSD, 2016-present. Represent company against claims of copyright infringement.

Elliott Kremerman v. Open Source Steel, et al., WAWD, 2017-2018. Represent company against claims of design patent infringement, trade dress infringement, and unfair competition related to sale of lab glassware.

SportPet Designs, Inc. v. Cat1st Corporation, et al., WIED, 2017-2018. Represent defendant against claims of patent and trademark infringement and unfair competition related to sale of pet products.

iFLY Holdings v. Indoor Skydiving Germany GmbH, TXED, 2015-2016. Represented wind tunnel manufacturers against claims of patent infringement and misappropriation; asserted counterclaims on unfair competition, fraudulent misrepresentation, tortious interference of economic advantage; obtained favorable claim construction ruling resulting in settlement of matter.

SyncPoint Imaging, LLC v. PixArt Imaging, LLC, et al., TXED, 2015-2018. Represent CMOS manufacturer against claims of patent infringement and breach of contract and implied covenant of good faith and fair dealing; successful inter partes review and bankruptcy action resulted in dismissal with prejudice.

In the Matter of Certain Wireless Headsets, ITC, 2015-2017. Represented foreign manufacturer of bluetooth headsets accused of patent infringement.

IPDEV Co. v. Ameranth, Inc., CASD, 2014 – 2015. Represented plaintiff/senior party in district court interference action involving patents relating to online ordering systems.

Altec, Inc. v. Edward Walker, et al., CAND, 2013 – 2015. Counsel for plaintiff in trade secret misappropriation, breach of contract matter involving hybrid technology; settlement resulted in defendant abandoning technology.

TRIC Tools, Inc. v. TT Technologies, Inc., et al., CAND, 2012 – 2015. Co-counsel for defendants alleged to infringe patents for trenchless piping; case settled following summary judgment in favor of client.

Ameranth, LLC. v. QuikOrder, Inc., CASD, 2013 – 2014. Represented two defendants in consolidated patent infringement actions (30+ total) relating to online ordering systems.

Wizie, Inc. v. Amadeus North America, Inc., MIED, 2013. Counsel for defendant in IP/breach of contract dispute relating to deployment of internet reservations software; secured early, rapid dismissal of complaint for no payment.

B-K Lighting, Inc. v. Vision3 Lighting, et al., CACD, 2006 – 2013. Lead trial counsel for start-up company accused of infringing patent covering architectural lighting fixtures. Court granted summary judgment of invalidity based on obviousness, overturned in part on appeal, then granted summary judgment of no infringement on remaining claims.

CEATS, Inc. v. Continental Airlines, et al., TXED, 2010 – 2011. Lead counsel for seven foreign airlines indemnified by Amadeus IT Group, SA (client) sued for infringement of e-commerce patents pertaining to online reservations systems; helped guide design-around that resulted in very favorable settlement.

O2 Micro Int’l. Ltd, et al. v. Monolithic Power Systems, Inc., et al., CAND, 2006 – 2009. Represented plaintiff in prosecution of patent infringement claims covering inverter controllers used in laptop and desktop LCD displays, one of multiple cases in district courts and ITC for O2 Micro.

LeVeen v. Edwards, BPAI, 1999-2002, reported at LeVeen v. Edwards, U.S.P.Q.2d 1416 (BPAI, 2000). Counsel for junior party LeVeen in interference regarding patent tissue ablation device.

Generation II Orthotics v. Medical Technology, WAWD, 1995 – 2007. Lead trial counsel in prosecution of patent infringement claims for knee braces for Canadian client; successfully appealed claim construction to Federal Circuit in 2000, obtaining reversal and remand in Generation II Orthotics, Inc. v. Medical Technology Inc., 59 U.S.P.Q. 2d 1919 (Fed. Cir. 2001); won jury verdict on retrial and successfully defended appeal, resulting in award of more than $7 million in damages and fees.

 

TALKS/SEMINARS

Adjunct Professor of Patent Law, Golden Gate University School of Law, 2012-present
“Dos and Dont’s of Patent Enforcement: Optimizing IP Value in Trying Times,” presented to American Vacuum Society, Northern California Section, September 13, 2012
“The America Invents Act of 2011: What It Means to You, the Inventor,” presented to ASME, Northern California Section, March 21, 2012
“Top 10 Things You Need to Know About the AIA,” webinar, September 27, 2011

PROFESSIONAL ASSOCIATIONS & BOARD MEMBERSHIPS

U.S.P.T.O Registered Patent Attorney
Member of American Bar Association, Federal Circuit Bar Association, AIPLA, IPO, ITC Trial Lawyers Association, San Francisco Bar Association, Litigation Counsel of America, IP Institute, American Society of Mechanical Engineers, American Vacuum Society, California Lawyers for the Arts AAMS. Fellow, Litigation Counsel of America.

PRESS

“Potential e-Discovery Relief in Patent Infringement Litigation,” Client Alert, November 15, 2011


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At Practus, we handle complex and challenging legal matters. I look forward to talking to you about how we can best meet your goals.

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