Matthew C. Mousley practices in the areas of intellectual property and information technology, including intellectual property trial and appellate litigation, technology licensing, and related business transactions. Mr. Mousley's experience includes both litigation and transactional work with diverse technologies such as pharmaceutical and healthcare products, telecommunications and the Internet, automation and manufacturing systems, and building and construction materials. He is regularly involved in intellectual property portfolio management in these and other technical fields.
Mr. Mousley has experience in all stages of patent litigation, from pre-litigation strategy and planning through final appeal. His litigation experience includes, among other fields, pharmaceuticals (Hatch-Waxman/ANDA), medical devices, direct marketing email systems, IP portfolio management software, interactive entertainment and video games, VoIP technology, and manufacturing automation systems. He is experienced in patent and prior art analysis, infringement analysis, motions practice, summary judgment briefing, preparation of infringement/invalidity contentions, expert reports, pre-trial orders, trial briefs, trial administration and presentation, and post-trial briefing. Drawing from his experience as a federal appellate judicial clerk, Mr. Mousley is experienced with prospective appellate strategy at trial and appellate practice post-trial.
Mr. Mousley is admitted to practice in Pennsylvania and New Jersey and is an active member, and current board member, of the International Technology Law Association (ITechLaw). Prior to joining Duane Morris, he served as a judicial clerk to the Honorable Marjorie O. Rendell of the United States Court of Appeals for the Third Circuit.
Mr. Mousley is a 2004 summa cum laude graduate of Villanova University School of Law, where he served as the executive editor of the Villanova Law Review, and a 2001 summa cum laude graduate of Franklin & Marshall College (B.A., Chemistry and French).
- Obtained a dismissal with prejudice of all asserted claims in a patent infringement case in the U.S. District Court for the Eastern District of Texas on behalf of Epsilon Data Management, LLC on the basis that all asserted claims had been invalidated.
- Won an appeal on behalf of Lutron Electronics of an Ex Parte Reexamination before the Patent Trial and Appeals Board (PTAB) involving a challenge by Creston Electronics of Lutron's Patent No. 5,905,442, protecting five licenses with total royalties to date of over $20 million and defending Lutron's Homeworks® and RadioRA® product families.
- RPost Holdings, Inc. et al v. Epsilon Data Management, LLC (E.D. Tex. 2012). Representing Epsilon Data Management, LLC in patent infringement litigation concerning products and services that verify the delivery and integrity of electronic messages, including but not limited to Epsilon's electronic mail marketing services.
- Obtained a dismissal with prejudice of a patent infringement case in the U.S. District Court for the Northern District of Illinois on behalf of Sears, Roebuck & Company on the basis that an online customer preference system did not infringe the asserted patents.
- Outside the Box Innovations, LLC, et al. v. Travel Caddy, Inc., et al. (Fed Cir.). Federal Circuit upheld a lower court ruling that client's carrying cases for tools did not infringe appellant's patents.
- Represented Lockheed Martin Corp. in opposing an effort by Zoltek Corp. to substitute it as a defendant in a patent infringement action Zoltek had originally brought against the United States stemming from the U.S.'s alleged use of Zoltek's patent in the manufacture of the F-22 fighter plane. Obtained a decision in an interlocutory appeal to the U.S. Court of Appeal for the Federal Circuit that reversed en banc a prior panel decision and a Court of Federal Claims decision that allowed Zoltek's claim against Lockheed. The Federal Circuit decision ruled that federal law protects contractors from infringement suits arising from work they perform for the government. Zoltek v. Lockheed Martin Corp. and United States, Case Nos. 96-166C (EJD) (Fed. Cl.) and 09-0096 (JOF) (N.D. Ga.); on appeal, Case No. 2009-5135 (Fed. Cir.).
- Represented Sandoz, Inc. in a patent infringement action regarding Sandoz’s abbreviated new drug application (ANDA) to make a generic version of Shire’s attention deficit hyperactivity disorder (ADHD) product Intuniv®, the active ingredient of which is guanfacine. Shire LLC v. Sandoz, Inc., Case No. 11-01110 (RBJ) (D. Colo.).
- Represented Apotex Inc. and Apotex Corp. in a patent infringement action regarding Apotex's abbreviated new drug application (ANDA) to make a generic version of Sanofi-Aventis' anti-cancer product Taxotere®, the active ingredient of which is docetaxel. Following a two-week trial, obtained an order for Apotex striking down the patents-in-issue as invalid and unenforceable due to Sanofi-Aventis' inequitable conduct in procuring the patents. Aventis Pharma S.A. and Sanofi-Aventis U.S. LLC v. Apotex Inc. and Apotex Corp., Case No. 08-496 (GMS) (D. Del.). Obtained an affirmance from the U.S. Court of Appeals for the Federal Circuit on all appealed invalidity and unenforceability rulings. Case No. 2011-1018 (Fed. Cir.).
- Represented Sandoz, Inc. in a patent infringement action regarding Eon/Sandoz's abbreviated new drug application (ANDA) to make a generic version of Pfizer’s anti-seizure product Neurontin®, the active ingredient of which is gabapentin. In re Gabapentin Patent Litig., MDL Docket No. 1384 (FSH) (D.N.J.).
- Represented Apotex Inc. and Apotex Corp. in a patent infringement action regarding Apotex’s abbreviated new drug application (ANDA) to make a generic version of Wyeth's anti-depressant product Effexor® XR, the active ingredient of which is venlafaxine hydrochloride. Wyeth v. Apotex Inc., and Apotex Corp., Case No. 08-022308 (S.D. Fla.).
- Obtained a summary judgment ruling in favor of a major manufacturer of building materials on its false advertising claims against an entity that billed itself as providing unbiased information about roofing products sold in Washington state. A federal court determined that the entity's statements about the client's roofing shingles were false and misleading in violation of the Lanham Act and the Washington Consumer Protection Act and permanently enjoined it from making such statements in the future. CertainTeed Corp. v. Seattle Roof Brokers, No. 09-cv-00563 (RAJ) (W.D. Wash.).
- Represented Psyadon Pharmaceuticals, Inc. in its acquisition by a subsidiary of Paragon Biosciences, bringing with it rights to develop, register and market ecopipam, a new chemical entity with orphan drug designation for the treatment of pediatric Tourette Syndrome.
- Represented H.C. Wainwright & Co. LLC, acting as sales agent, in a $12.5 million at-the-market (ATM) equity offering of common stock for Aethlon Medical, Inc. (NASDAQ: AEMD).
- Represented FBR Capital Markets & Co., acting as sales agent, in a $4 million at-the-market (ATM) equity offering of common stock for Cyclacel Pharmaceuticals, Inc. (NASDAQ: CYCC).
- Represented WineAccess, Inc., a direct-to-consumer (DTC) wine eCommerce company, in its acquisition by Norwest Venture Partners, a global, multi-stage venture capital and growth equity investment firm.
- Represented Verizon Communications Inc. in negotiating and executing the various licensing and other agreements necessary for it to be able to spin off its local exchange and related business assets in 14 states to Frontier Communications Corp.
- Represented Verizon Communications Inc. in negotiating and executing software consents for transition services necessary for it to be able to spin off its local exchange and related business assets in New England to FairPoint Communications, Inc.
- Represented Verizon Communications Inc. in negotiating and executing software consents for transition services necessary for it to be able to spin off its directories business and related business assets to Idearc Media LLC.
- Represented pro bono a former attorney for the United States Department of Justice and obtained a decision from the Court of Appeals for the Federal Circuit holding that an 18 month appointment the client received while her background check was pending did not constitute "temporary" work, and that she therefore qualified as an employee with appeal rights to seek back pay for her wrongful termination.
Intellectual Property Litigation
- New Jersey
- Villanova University School of Law, J.D., summa cum laude, 2004
Executive Editor, Villanova Law Review
- Franklin & Marshall College, B.A., summa cum laude, 2001
- Duane Morris LLP
- Partner, 2013-present
- Associate, 2005-2012
- Judicial Clerk to the Honorable Marjorie O. Rendell of the U.S. Court of Appeals for the Third Circuit, 2004-2005
- International Technology Law Association – ITechLaw (formerly Computer Law Association)
- Board of Directors, 2011-present
- Vice-chair of Membership committee, 2012-present
- Editor of E-Newsletter, 2010-2012
- U.S. conference and annual meeting planning committee, 2009-2011
- Intellectual property law committee, 2007-present
- E-commerce law committee, 2007-present
- Philadelphia Bar Association
- Vice-chair of Cyberlaw committee of the Business Law Section, 2013-present
Co-author, "What Your Competitors Don’t Know Can Hurt You - The Supreme Court Rules that Secret Sales Can Trigger the On-Sale Bar Under the AIA," Duane Morris Alert, January 24, 2019
Co-author, " Five Good Habits of University Researchers Launching Spinouts," Duane Morris Life Sciences Blog, November 5, 2018
Quoted in "GoFundMe Waives Most Restrictive Clause in Refund Policy for Johnny Bobbit Donors," Philly.com, September 6, 2018
- Co-author, "Supreme Court Clarifies Scope of the Patent Exhaustion Doctrine," Duane Morris Alert, June 9, 2017
- Quoted in "Wearable Technology Creates New Legal Problems," The Legal Intelligencer, June 16, 2015
- Co-author, "Chapter 18: ANDA Preparation (with an Eye toward Approval and Litigation) and the FDA Review," Pre-ANDA Litigation: Strategies and Tactics for Developing a Drug Product and Patent Portfolio, 2014
- Co-author, "Addressing Breach of Method-of-Use Patents by Generics," Law360, May 2, 2012
- Co-author, "Federal Circuit Addresses Infringement of Method-of-Use Patents by Generics in Yasmin® Case," Duane Morris Alert, April 18, 2012
- Co-author, "Copyright Law Implications in Video Games and Virtual Worlds," Chapter in Computer Games and Virtual Worlds: A New Frontier in Intellectual Property Law, American Bar Association Section of Intellectual Property Law (2010)
- "Supreme Court Expands the Patent Exhaustion Doctrine," Duane Morris Alert, June 10, 2008
Selected Speaking Engagements
- Guest lecturer on Intellectual Property Law, Drexel University
Presenter, “E-Signed, Sealed, Delivered,” Duane Morris Commercial Contracts Checkup Series, Webinar, January 24, 2019
Presenter, “Are You Up-to-Date on Key Provisions and Confidential Information Protections in Term Sheets, MOUs and Letter Agreements?” Duane Morris Commercial Contracts Checkup Series, Webinar, June 21, 2018
Presenter, "Privacy, Data. and New Tech: What Businesses Need to Know (and Really Can't Afford to Put Off)," Duane Morris Alumni CLE, October 26, 2017
- Speaker, "Cybersecurity Policies and Best Practices," Philly Tech Week, May 5, 2016
- Moderator, "Making Sure Your 'Cloud' Has a Silver Lining," Philadelphia Bar Association Cyberlaw Committee, October 2014
- Invited Lecturer, Security, Privacy and the Cloud Computing, Advanced Practices Council, October 2014
- Moderator, "Cryptocurrency: Bitcoin and Beyond," Philadelphia Bar Association, Cyberlaw Committee, August 2014
- Panelist, Food and Drug Law Institute (FDLI) 55th Annual Conference, Washington, D.C., April 2012
- Invited Lecturer, "Introduction to Intellectual Property Law," Law Review CLE, Philadelphia, March 2012
- Co-presenter, "Security Breaches," Duane Morris Audiocast, October 2010
- Co-presenter, "An Overview of Security Laws in the United States," Duane Morris Audiocast, October 2010
- Co-presenter, " Privacy Law in the U.S.: An Overview of Laws at the Federal and State Levels," Duane Morris Audiocast, July 2010