• Share
  • Email
  • Print

Matthew S. Dicke

Partner
+1.312.578.5415
Fax +1.312.827.7072

Matthew S. Dicke is experienced in all facets of patent prosecution, freedom to operate and opinion work, and due diligence, as well as patent litigation and licensing.

Mr. Dicke has patent litigation, domestic and foreign prosecution and opinion experience involving a variety of technologies including gaming devices, renal devices, medical diagnostic and monitoring systems, surgical devices, infusion pumps, hospital and EMR software, air treatment devices, automotive diagnostic systems, pharmaceuticals, liquid crystal display technology, signal processing, robotics, cooking devices, wind turbines, beverage machines, footwear, industrial painting systems, toys, sportswear and sporting goods, design patents, business methods and a variety of miscellaneous mechanical and electromechanical devices. Mr. Dicke’s prosecution experience includes handling of U.S. ex parte and inter partes reexaminations, inter partes review and assisting foreign counsel with European oppositions.

Mr. Dicke has successfully argued before the U.S. Court of Appeals for the Federal Circuit and the U.S. Patent Trial and Appeal Board. In addition, Mr. Dicke has participated in successful proceedings before the European Opposition Division.

Mr. Dicke serves a global client base and is able to strategically counsel clients of all sizes through all aspects of their patent portfolios from concept inception and filing, through patentability and landscape research, all the way to licensing or litigation.

Professional Background

Prior to attending law school, Mr. Dicke worked for Caterpillar, Inc. where he gained experience related to truck, machine and marine engines, gas power modules and fuel cell power modules. Mr. Dicke gained extensive patent prosecution experience at another Chicago-based firm prior to joining the firm in 2005.

Professional/Civic Activities

  • Chicago Volunteer Legal Services
  • Lawyers for the Creative Arts

Speaking Engagements

  • MIT Enterprise Forum, Chicago
  • DePaul University College of Law

Additional Information

Mr. Dicke was featured in Chicago Volunteer Legal Services Annual Report which was published in the November 2008 issue of Communication Arts Design Annual 49.
Representative Patent Litigation Experience
  • Counsel for patent owner at oral argument in Federal Circuit Appeal No. 2014-1447, Plas-Pak Industries, Inc. v. Sulzer Mixpac AG.  Federal Circuit affirmed PTAB’s decision declining to make rejections proposed by challenger and upholding validity of patent directed to a device and method for mixing and dispensing multi-component paints.
  • Counsel for patent owner at oral argument in Federal Circuit Appeal No. 2014-1451, Plas-Pak Industries, Inc. v. Richard Parks Corrosion Technologies, Inc.  Federal Circuit affirmed PTAB’s decision declining to make rejections proposed by challenger and upholding validity of patent directed to a device and method for mixing and dispensing multi-component paints.
  • Member of trial team for Sigma International in a patent infringement jury trial against CareFusion Corp. in the Southern District of California. CareFusion sought $171 million in damages and a permanent injunction in relation to a patent covering a downstream occlusion sensor in an infusion pump.  The jury returned a complete defense verdict after a two week trial.
  • Trial team for Baxter International Inc. which obtained a $17 million judgment in a jury trial involving patents for a hemodialysis machine in the Northern District of California.  The team obtained a permanent injunction and running royalty exceeding $75 million.
  • Trial team for Eastman Kodak Company in the U.S. International Trade Commission and multiple district courts for patent infringement matters against Apple, Inc. and Research In Motion (RIM) related to camera technology found in iPhone and BlackBerry devices.
  • Member of a team which defended CorePharma LLC against a Temporary Restraining Order related to the introduction of a pharmaceutical for the treatment of kidney stones; the opposing party agreeing to dismiss with prejudice.
Representative USPTO/European Practice
  • Control No. 95/001,371 (counsel for patent owner); reexam ordered 8/24/2010; patentability confirmed 1/21/2014 following PTAB appeal and denial of Request for Rehearing
  • Control No. 95/001,656 (counsel for patent owner); reexam ordered 8/15/2011; patentability confirmed 1/17/2014 following PTAB appeal and oral argument
  • Opposition of European Patent No. EP1277485 (co-counsel for patent owner); opposition ordered 8/27/07; advised patent owner at oral argument in Munich before Opposition Division on 11/4/13 where claims upheld as issued.