Matthew C. Berntsen Image

Matthew C. Berntsen

is Litigation Counsel at Blackbird Technologies. Mr. Berntsen has extensive experience representing individuals and companies of all sizes in complex patent disputes.

Mr. Berntsen has successfully litigated cases involving a wide range of subject matter including computer- and Internet-based technologies, wireless and optical data transmission, LEDs, semiconductor lithography, industrial automation, pharmaceuticals, and sporting equipment, among others. Mr. Berntsen’s experience includes representing clients before Federal District Courts around the country, the Federal Circuit, as well as the International Trade Commission (ITC). He has also architected numerous successful proceedings before the Patent Trials and Appeals Board (PTAB).

Recent Articles by Matthew C. Berntsen

Recovering Fees and Expenses For U.S. Discovery Compliance in Foreign Litigation – Improbable Even When Possible

Under 28 U.S.C. Section 1782, parties engaged in (or expected to engage in) foreign litigation are empowered to  seek discovery in the United States for use in the foreign litigation. Specifically, under § 1782, foreign litigants may apply directly to any district court in the U.S. where a person or entity with information relevant to the foreign litigation can be located or found, and that court can order such discovery. If discovery is granted (which is usually the case), the party providing the discovery will typically bear the costs of providing it. As with any other discovery in the United States, the compliance costs are considered a “normal cost of doing business” and are not usually shifted to the party seeking discovery. However, Rule 45(d)(2)(B) does allow for nonparties to shift costs for discovery compliance in certain circumstances—i.e., where there is a “significant expense” arising from a specific order “compelling production or inspection.”  Yet, despite a fee-shifting mechanism for nonparties, courts have granted a very limited number of requests for the recovery of fees and costs for compliance in a § 1782 proceeding under Rule 45.

Design Patents 101: Understanding Utility Patents’ Lesser-Known Cousin

Design patents provide powerful protections both on their own and as a complement to their more well-known cousin, utility patents. The highly publicized Apple v. Samsung lawsuits of the previous decade featured both design and utility patents, and revitalized public awareness of design patents in general. In fact, it was infringement of the design patents that resulted in the large damages awards in those litigations, with three design patents resulting in an award of $533.3 million and two utility patents only $5.3 million. Beyond the likelihood of greater money damages, as compared to their utility patent counterparts design patents are also less expensive to obtain and hold, offer simpler determinations of infringement and validity, and are less susceptible to being invalidated (whether, e.g., for non-patent eligible subject matter or via a post-grant procedure). As such, design patents are more likely to survive, potentially resulting in substantial damages for the patent holder.