Nicholas T. Matich

Nicholas Matich is a principal in McKool Smith’s intellectual property (IP) practice, representing a broad array of clients in IP disputes both as plaintiffs and defendants and advising clients on IP strategy.  Nick frequently speaks and is quoted in the media on US IP policy and litigation and his clients include, high tech companies, life science companies, and major trademark holders.  Prior to joining the firm, Nick served as Acting General Counsel of the United States Patent and Trademark Office (USPTO) where he represented the agency before the Federal Circuit and U.S. Supreme Court. 

Since joining McKool, IAM has selected Nick three times as one of the world’s top 300 IP strategists and described him as: “A thoughtful advisor, tenacious advocate, and a brilliant lawyer.” Nick “has a profoundly deep understanding of SEP and FRAND issues and his insights are critical to positioning his clients for success. He is highly recommended to any IP holder looking to get the most out of their assets.” Nick “handles disputes flawlessly and delivers top results, and his abilities to manage details and see the whole strategic picture are unmatched.”  Nick has also been recognized three times by Lawdragon in their Guide to the 500 Leading Litigators in America.

During his time with the USPTO, Nick supervised the provision of legal advice and litigation on intellectual property (IP) and administrative matters for the agency, including providing legal advice on patent, trademark, and copyright matters. His responsibilities included supervising more than 130 attorneys and support staff of USPTO’s Office of the General Counsel, including the Office of the Solicitor which litigates IP matters on behalf of the USPTO. Nick also coordinated with the Department of Justice, Department of Commerce, and other agencies in developing the government's position on major IP cases before the Supreme Court and Courts of Appeals. Prior to assuming the role of Acting General Counsel, Nick served as Senior Legal Advisor in the Office of the USPTO Director, in which capacity he personally briefed and argued a number of high-profile appeals on behalf of the USPTO. 

Prior to working at the USPTO, Nick served as Deputy General Counsel at the Office of Management and Budget (OMB) within the Executive Office of the President. At OMB, he oversaw attorneys advising on the full range of legal issues affecting the agency and supervised OMB’s legal review of significant regulatory actions by federal agencies. Nick also concurrently served as a presidential appointee on the governing body of the Administrative Conference of the United States (ACUS), an independent executive branch agency charged with advising other federal agencies on administrative law and processes.

Before joining OMB, Nick worked in the White House as Special Assistant to the President and Associate Staff Secretary, where he coordinated the vetting of executive orders, speeches, legislation, signing statements, memoranda, and other documents for the president. Prior to his service in the government, Nick practiced at several prominent law firms and worked as a law clerk for the Honorable Richard C. Wesley of the United States Court of Appeals for the Second Circuit.

Nick earned his bachelor’s degree summa cum laude from the University of Notre Dame and his law degree from the University of Virginia School of Law, where he was Senior Editor of the Virginia Law Review. Before attending law school, Nick served in the United States Navy as a Surface Warfare Officer and made several overseas deployments.

• Anduril Industries Inc. v. Salient Motion Inc. et al., 23-cv-01650 (C.D. Cal.) – Lead counsel for military artificial intelligence and autonomous vehicle company Anduril in trade secrets dispute with former employees and their new company.

• Laser Spallation Technologies, LLC v. The Boeing Company, 23-cv-02294 (C.D. Cal.) – Lead counsel for Boeing defending infringement claims brought by a University of California spin-out entity.

• Greenthread and Vervain Litigation (W.D. Tex., D. Del., E.D. Tex., D. Or.) – McKool Smith client, Dr. Mohan Rao, is a pioneering semiconductor innovator who has more than 100 patents to his name and has inventions featured in the Smithsonian Museum of American History.  Companies affiliated with Dr. Rao have generated more than $50,000,000 in licensing revenue in matters where they were represented by McKool Smith.

• University of Texas – Lead counsel representing the University of Texas in an out-of-court dispute with a licensee of the University’s technology.

• International Watchman Inc. v. Reeds Wilmington Jewelers Inc., 23-cv-2396 (N.D. Ohio) – Representing Reeds Jewelers in trademark infringement action.

• Actian Corp. v. Sabre GLBL Inc., 24-cv-00034 (N.D. Tex) – Representing software company Sabre in copyright and licensing dispute.

• The Real United States Football League v. Fox Sports, Inc., et al., 2:22-cv-01350 (C.D. Cal.) – Lead counsel in representation of professional football franchise owners organization against Fox Sports in a trademark and false advertising dispute arising from Fox’s launch of a new football league.  The case settled after the court ruled that our clients were likely to succeed on the merits.

• Harmony Licensing, LLC v. Silicom Connectivity Solutions Inc., 2:22-cv-01346 (W.D. Was.) – Lead counsel for publicly traded networking and data infrastructure company as defendant in patent infringement action.  Obtained complete walkaway dismissal of all claims.

• Collision Communications, Inc. v. Nokia Corporation, et al., 2:21-cv-00308 (E.D. Tex.) – Defended Nokia in patent and contract disputes regarding Nokia’s cellular infrastructure products.

• Ericsson, Inc. v. Samsung Electronics Co., Ltd., et al., 2:20-cv-380 (E.D. Tex.) – Represented Ericsson and successfully obtained a preliminary injunction against a foreign anti-suit injunction in standard essential patent litigation.  The case settled shortly after the court issued the injunction in our client’s favor.

• Nokia Technology Oy v. Lenovo Technology Co., Ltd., et al., 337-TA-3466 (ITC); 5:20-cv-8650 (N.D. Cal.); 5:19-cv-0427 (E.D.N.C.) – Represented Nokia in RAND patent infringement litigation regarding video compression technology in multiple district courts and the ITC.  Nokia announced that the settlement of the case “reflects Nokia’s decades-long investments in R&D and contributions to cellular and multimedia standards.”

• Currently advising major owners of video coding and cellular standard essential patents on licensing strategy across multiple industries, including streaming, consumer electronics, and automobiles

• Advised major biologic innovator defending challenges to its patent portfolio

Experience Prior to Joining McKool

• AbbVie Biotechnology, Ltd. v. United States, No. 17-2304 (Fed. Cir.) – Argued and briefed appeal from PTAB’s determination of unpatentability of claims for dosing regimens for the rheumatoid arthritis treatment HUMIRA®. The Federal Circuit affirmed the PTAB decision in full.

• Kaken Pharmaceutical Co., Ltd., et al. v. Iancu, No. 18-2232 (Fed. Cir.) – Argued appeal from the PTAB’s determination of unpatentability of claims for the onychomycosis drug JUBLIA®.

• Amgen Inc., et al., v. Iancu, No. 19-2171 (Fed. Cir.) – Briefed appeal from the PTAB’s invalidation of patent claiming methods of manufacturing biologics.

• HTC Corp., et al. v. Ericsson Inc., et al., No. 19-40566 (5th Cir.) – Argued and drafted briefs for the United States in appeal of standard essential patent licensing dispute.

• In re: Thomas, No. 19-2053 (Fed. Cir.) – Argued and briefed appeal in defense of USPTO’s § 101 rejection of patent application for computer networking technology.

• In re: Boloro Global Ltd., No. 19-2349 (Fed. Cir.) – Represented USPTO Director in constitutional challenge to the PTAB.

• Arthrex, Inc. v. Simth & Nephew Inc., et al., No. 18-2140 (Fed. Cir. & U.S. Supreme Court) – Represented USPTO Director in constitutional challenge to the PTAB.

• Linde v. Arab Bank, No. 16-2119 (2d Cir.) – Briefed appeal successfully vacating $100 million tort verdict.

• Elenza, Inc. v. Alcon Research Ltd., et al., No. N14C-03-185 (Del. Sup. Ct.) – Successfully represented medical device manufacturer in trade secret dispute regarding ophthalmic implant.

• Dietz v. Bouldin, No. 15-458 (U.S. Supreme Court) – Drafted petition for certiorari and merits briefing regarding jury procedure.

• Advised on and negotiated IP transactions for a professional education company.

• Advised on-line retailer on false advertising and data protection matters.

• Advised trade association of major copyright holders on copyright matter.

• IAM Strategy 300 (2022, 2023, 2024)
• IAM Patent 1000 (2024)
• Lawdragon 500 Leading Litigators in America (2023, 2024, 2025)
• Super Lawyers, "Rising Star" 2023-2024

Intellectual Property Owners Association, Standards Setting Committee

Member, IPO Standards Setting Committee

Member, AUTM Public Policy Legal Task Force