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 selected Nick 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 has also been recognized by Lawdragon in their inaugural 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 stakes 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.
- Greenthread, LLC v. Intel Corporation et al., 6:22-cv-00105 (W.D. Tex.) – Lead counsel representing semiconductor innovator with inventions featured in the Smithsonian Museum of American History in Western District of Texas patent enforcement action against Intel and Dell
- 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
- Edible IP, LLC et al v. 1-800-Flowers.com, Inc. et al., 1:20-cv-02405 (N.D. Ga.) – Lead counsel representing Edible Arrangements in trademark infringement action arising from a competitor’s use of its trademarks in search engine advertising
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.) – Defending 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.
Rankings & Honors
- Recognized in the guide to the Lawdragon 500 Leading Litigators in America, 2022
Named among the world's top IP value creators by IAM 300, 2022
- Named among the Top Most Active and Performing Attorneys Representing Complainants by the Patexia ITC Intelligence Report, 2023
Community & Professional Activities
Intellectual Property Owners Association, Standards Setting Committee
Member, IPO Standards Setting Committee
Member, AUTM Public Policy Legal Task Force
Media & Events
- Nick Matich quoted in The Global Legal Post's article, "US IP Office Axes Patent That a Jury Had Previously Ordered Intel To Pay $675M for Infringing"05.18.2023
- Nick Matich Speaks with Managing IP about Advance Notice of Proposed Rulemaking Regarding PTAB Reforms05.04.2023
- Nick Matich quoted in Bloomberg Law's article, "Patent Director’s Sanctions ‘Backtrack’ Sparks Attorney Concerns"02.13.2023
- Nick Matich provided commentary to Life Science IP Review's article, "Gilead Avoids $1.2bn Patent Clash at SCOTUS"01.27.2023
- Nick Matich provided commentary to IPWatchdog's article, "All I Want for IP in 2023: Kicking off the New Year with the IP Community’s Wildest Dreams"01.03.2023
- Nick Matich provides commentary to Law360's article, "Justices Seem Less Receptive to SG's Take on IP Cases"11.15.2022
- Nick Matich provides commentary to Bloomberg Law's article, "Vidal Flexes Sanctions in OpenSky 'Abuse' Case"10.05.2022
- Nick Matich quoted in World Intellectual Property Review's article, "Vidal Reprimands OpenSky for IPR Abuses"10.05.2022
- 20 McKool Smith Principals Recognized in Lawdragon's 2022 Guide to the 500 Leading Litigators in America10.04.2022
- Nick Matich quoted by IPWatchdog's article, "Gaming the Patent Litigation System: IPWatchdog LIVE 2022 Panelist Talk Venue and Villains in the Patent World09.14.2022
- Nick Matich quoted in World Intellectual Property's article, "SCOTUS Refuses to hear Patent Eligibility Case"07.01.2022
- Nick Matich provided commentary to Law360's article, "Justices' Patent Eligibility Denial Won't End Fight For Clarity"07.01.2022
- Nick Matich quoted in Law360's article, "Feds' Patent Injunction Views Murky After Dropped Policies"06.10.2022
- Nick Matich quoted in World Intellectual Property Review's article, "SEP Remedy Withdrawal 'Best for Innovation,' Say US Agencies"06.09.2022
- Nick Matich provided commentary to IPWatchdog's article, "Vidal to Review Institution of Cases Against VLSI Under Interim Director Review Process"06.08.2022
- Nick Matich quoted in Bloomberg Law's "Vidal Expected to Tackle Patent Board PR ‘Nightmare,’ Reviews"04.07.2022
- Nick Matich quoted in Bloomberg Law's article, "Sabotage Claims Swirl in Patent Feud With Billions at Stake (1)"03.10.2022
- Nick Matich quoted in IAM's article, "Group of big company general counsel calls for Fintiv overturn to 'restore balance to the American patent system'"02.14.2022
- Nick Matich quoted in Bloomberg Law's article, "Review of VLSI Patents in Intel Fight Seen Enticing 'Opportunists'"01.31.2022
- Nick Matich provided commentarty to World IP Review's article, "SCOTUS Declines Apple, Mylan Challenge to NHK-Fintiv Rule"01.20.2022
- Nick Matich quoted in World Intellectual Property Review's article "2022 Forecast: AI, Fintiv Rule, Arthrex"01.18.2022
- Nick Matich provided commentary to National Law Journal's article, "Amid Challenge From New LLC, PTO to Take Another Look at Patent Worth $675 Million"01.12.2022
- Nick Matich quoted in IAM's article, "VLSI claims “gamesmanship” in IPR attack on patent from $2 billion Intel verdict"01.12.2022
- Nick Matich quoted in World IP Review's article, "2022 Forecast: Patent Eligibility, COVID-19, NFTs"01.11.2022
- Nick Matich quoted in Texas Lawyer's article, "PTO Accepts Newly Formed LLC's Challenge to Review Patent Infringement Verdict Worth $675 Million"01.03.2022
- Nick Matich quoted in IPWatchdog’s article “DOJ Issues Revised Draft Joint Policy Statement on Remedies for SEPs Subject to FRAND”12.09.2021
- Nick Matich quoted in Intellectual Property Magazine’s article “Vermont Senator Patrick Leahy to Retire”11.18.2021
- Nick Matich quoted in Bloomberg Law’s article “U.S. Patent Eligibility Muddle Sets It Apart From Other Countries”11.12.2021
- Nick Matich quoted in Reuters’ article, “Biden chooses Delaware judge Stark as second Fed Circ. Nominee"11.03.2021
- Nick Matich quoted in Bloomberg’s article “A Patent Board Litigator Is Now Poised to Be Its Final Arbiter”10.29.2021
- Nick Matich’s commentary included in IPWatchdog’s article “Industry Reacts to Kathi Vidal Nomination”10.28.2021
- Nick Matich provided commentary to World IP Review's article "Kathi Vidal Announced As USPTO Director"10.26.2021
- Nick Matich’s comment included in IPWatchdog article “Comments on USPTO Patent Eligibility Study Reveal Stark Contrast in Viewpoints of Some U.S. Patent Stakeholders”10.19.2021
- Nick Matich shared commentary in Managing IP’s article, “The AIA at 10: The Good and Debatably Bad, According To Counsel”10.05.2021
- Nick Matich quoted in IAM’s article, “A Decade On, PTAB Debate Still Dominates Discussion of the AIA’s Legacy”09.16.2021
- Nick Matich provided commentary in Bloomberg Law’s article “Biden Signals Shift Toward Tech on Standard Essential Patents”07.27.2021
- Nick Matich quoted in Life Sciences IP Review’s article “Minerva: Less Risk for Inventors, More Work for the Courts”07.20.2021
- Nick Matich provided commentary to Intellectual Property Magazine’s article “Biden’s Executive Order Targets Pay-for-Delay”07.20.2021
- Nick Matich provided commentary in World IP Review’s article “Lawyers Hail USPTO’s Bid to Resolve Patent Eligibility Muddle”07.14.2021
- Nick Matich provided commentary to IPWatchdog’s article “Industry Commenters Say Minerva Ruling is a Win for Employee Mobility”06.30.2021
- Nick Matich provided commentary in World Trademark Review’s article “‘The Second Circuit Got It Right’: FTC Decision Reversed in Trademark Agreements Dispute”06.15.2021
- Nick Matich was quoted in Intellectual Property Magazine's article, "Second Circuit Overturns FTC's 1-800 Contacts Antitrust Verdict"06.14.2021
- Nicholas Matich commented in Managing IP's article "Counsel Split on Whether USPTO's TMA Rules Will Deter Bad Guys"05.27.2021
- Nick Matich provided commentary to Intellectual Property Magazine’s article, “USPTO Issues Proposed Rules to Implement TMA”05.24.2021
- Nick Matich provided commentary to World Trademark Review's article, "USPTO Announces Proposed New Rules; Clubhouse Trademark Infringement Suit; Atari Sues Pixels - News Digest"05.19.2021
- Nick Matich commented in Westlaw Journal Intellectual Property's article, “Supreme Court will limit assignor estoppel, not get rid of it, attorneys say”04.29.2021
- Nick Match quoted in Bloomberg Law article, “PTAB To Use District Court Standard for Indefiniteness”01.08.2021
- Nick Matich provided commentary to the Law360 article, “USPTO Aligns AIA Review Indefiniteness Test With Courts”01.06.2021
- Law360's, "USPTO Says Patent Specification is Evidence, Not Prior Art" (prior to Nick Matich joining the firm)08.19.2020
- Law360's, "HTC, Ericsson Tangle At 5th Circ. Over How To Value Patents" (prior to Nick Matich joining the firm)05.06.2020
- IAM's, "SEP FRAND policy rewrite designed to bring predictability, says senior legal advisor to USPTO head" (prior to Nick Matich joining the firm)01.16.2020
- Law360's, "Fed. Circ. Affirms PTAB Ax of AbbVie's Humira Patent" (prior to Nick Matich joining the firm)01.08.2020
- Law360's, "Full Fed. Circ. Urged By All Sides To Rethink Arthrex" (prior to Nick Matich joining the firm)12.17.2019
- Nick Matich to Moderate"Diamonds in the Rough: Indentifying New Licensing Opportunities from Old Patents" at AUTM 202302.16.2023
- Alfonso Chan, Scott Hejny, and Nicholas Matich will participate in a Round Table Discussion titled "The Intersection of IP and AI Research at Universities" at AUTM 202302.16.2023
- Nick Matich to participate on the the Intellecutal Property Owners Association (IPO) webinar titled, "The End of U.S. Government Guidance on FRAND?"11.09.2022
- Nick Matich served as panelist for IP Watchdog's "Winning Alice and Mayo at the Distrcit Courts and on Appeal"05.23.2022
- Nick Matich moderated "Litigation University IP: Challenges and Opportunities" at the 2022 AUTM Annual Meeting02.23.2022
- Nick Matich will serve as panelist for policy workshop “Revisiting the USPTO’s Rulemaking Authority After Cuozzo And City Of Arlington”08.30.2021
- Nick Matich served as a panelist for the Federal Circuit Bar Association titled "Dispute Resolution Challenges: Innovation, Self-Help, and Judicial Systems"04.22.2021
Patent Office Practice After the America Invents Act, 23 Federal Circuit Bar Journal 225, 2013
Copyright Preregistration: Evidence and Lessons from the First Seven Years, 55 Arizona Law Review 1073, 2013 (Co-authored)
Forum Domination: Religious Speech in Extremely Limited Public Fora, 98 Virginia Law Review 1149, 2012
J.D., University of Virginia School of Law
- Senior Editor, Virginia Law Review
B.A., summa cum laude, University of Notre Dame
- Phi Beta Kappa
- Hon. Richard C. Wesley, United States Court of Appeals for the Second Circuit
- District of Columbia
- The U.S. Courts of Appeals for the Second, Fifth, Tenth, and Federal Circuits
- The U.S. Patent and Trademark Office for inter partes proceedings
- The U.S. District Courts for the Eastern and Western Districts of Texas
- Member, AUTM Public Policy Legal Task Force