Duane H. Mathiowetz

Mr. Mathiowetz's practice is devoted to litigation of patent, trademark and trade secret matters, patent interferences before the US Patent and Trademark Office, and counseling clients on IP-related issues. In addition to the matters he has argued before the Federal Circuit Court of Appeals, he has argued before the Board of Patent Appeals and Interferences, and has represented clients before district courts throughout the country and before the US International Trade Commission. Mr. Mathiowetz has represented and counseled clients in diverse industries, including advanced semiconductor manufacturing, devices and materials; silicon crystal growth; LCD panel backlighting; biotechnology; geological exploration and modeling; alternative fuels; television electronic program guides; MEMS devices; mechanical harvesters; orthopedic bracing; and architectural lighting. He won a $7 million judgment and a $4 million settlement in separate patent infringement matters for one of the world's leading orthopedic device companies. Prior to practicing law, Mr. Mathiowetz received an advanced degree in mechanical engineering and worked in industry for more than 10 years, first with the General Motors Proving Grounds in Michigan, and later with Bechtel Corporation in San Francisco, specializing in vibration and acoustics for the automotive and power industries, and in matters relating to nuclear power plant design and licensing. Mr. Mathiowetz has been named a Northern California Super Lawyer by the Daily Journal (2007-2008). He is a member of the Federal Circuit Bar Association's Veterans Appeals Committee, handling veterans' appeals to the Federal Circuit, and is currently handling pro bono a veteran's appeal to the Board of Veteran's Appeals.

Representative Highlights

· Amadeus Americas, Inc. Mr. Mathiowetz was Lead Counsel for Amadeus Americas, Inc., one of the world's largest providers of service solutions to the travel industry, in a substantial breach of software contract suit filed against Amadeus relating to a failed joint venture. Following a hearing before a three-person American Arbitration Association panel, Amadeus was found to not have breached the contract, maintained its rights to control of the disputed software, and was awarded its full fees and costs. The client expressed its satisfaction not only in prevailing, but in the streamlined and efficient manner in which the litigation was carried out.

· O2 Micro International Limited. Mr. Mathiowetz has led O2 Micro's litigation team in five district court actions in Texas and California in which O2 Micro has accused competitors of infringing its patents for inverter controller products. Such controller technology is used in almost every laptop and desktop LCD display, as well as in LCD televisions and many commercial products incorporating LCD displays. He has served as co-counsel at trial of three of those matters that have gone to jury verdict, and a fourth which settled during trial, during the past four years. Four of the cases have been appealed to the Federal Circuit Court of Appeals, and Mr. Mathiowetz has played a leading role in preparation of the appeals. Mr. Mathiowetz is now representing O2 Micro in another similar case in the Northern District of California and a proceeding before the International Trade Commission.

· Ossur Americas, Inc. Mr. Mathiowetz was Lead Counsel for Ossur Americas, Inc., one of the world's leading manufacturers of orthopedic devices, as plaintiff in a trade secret misappropriation action in the Western District of Washington. Mr. Mathiowetz initiated litigation against two former employees who left the company and launched their own product to compete against a new generation of orthopedic braces that was still under development by Ossur. Drawing on his experience in both patent prosecution and patent litigation, Mr. Mathiowetz was able to secure a favorable settlement for Ossur. This was follow-on work for Ossur, whom Mr. Mathiowetz represented as Lead Counsel in a patent infringement action against a competitor involving an earlier generation knee brace, also in the Western District of Washington. Over the course of 11 years, that matter went to trial twice and was appealed twice to the Federal Circuit Court of Appeals, where Mr. Mathiowetz argued successfully for Ossur both times. Mr. Mathiowetz obtained a judgment of more than $7 million for his client, and then successfully guided Ossur's efforts to secure the judgment against defendant's bankruptcy claim.

· Fresno Valves & Castings. Mr. Mathiowetz was Lead Counsel for the Vision3 Lighting, a start-up company and division of Fresno Valves & Castings, in a patent infringement and unfair competition action in the Central District of California. The action was brought against Vision3 by an aggressive competitor in the high-end architectural lighting market which was determined to put Vision3 out of business, claiming that former employees copied its patented products. Though constrained by the limited resources of a start-up, Mr. Mathiowetz succeeded in having the patent-in-suit declared invalid and the case declared exceptional, setting the stage for Vision3 to recover its fees and costs. Notwithstanding the aggressive tactics of his foe, Mr. Mathiowetz and his small team was able to achieve success at substantially less cost to Vision3 than is typical of patent infringement cases of this magnitude and, more importantly, allow Vision3 to continue its business.

Professional Affiliations

· American Bar Association, Member

· American Intellectual Property Law Association, Member

· Computer Law Association, Member

· Federal Circuit Bar Association, Member

· International Trade Commission Trial Lawyers Association, Member

Member: American Bar Association; American Intellectual Property Law Association; Computer Law Association; Federal Circuit Bar Association; International Trade Commission Trial Lawyers Association.