Matthew Henry Horton

Senior Counsel

Overview

Matthew Horton is a senior counsel and intellectual property lawyer with Foley & Lardner LLP. He is a member of the firm’s Electronics Practice. Matthew’s practice focuses on patent law and intellectual property protections, particularly in cybersecurity platforms and processes, artificial intelligence and machine learning, mobile devices and applications, cloud computing systems, and computer hardware.

With hands-on knowledge on software code and complex mathematics, Matthew is able to engage engineers, computer scientists and cybersecurity professionals at a technical level, and brings a combination of legal and technical knowledge easily tailored to address legal issues associated with high technology innovation. Matthew regularly counsels clients on developing strategic intellectual property portfolios, helping them to identify and develop business-oriented and industry-oriented portfolio strategies.

Matthew regularly helps clients with strategic IP portfolio development and patent litigation. In patent prosecution, Matthew has successfully drafted or prosecuted a variety of high-technology patents, including patent applications directed to cybersecurity technologies, artificial intelligence and machine learning, high-performance computing, high-availability infrastructures, cloud computing, mobile and web applications, mobile devices, business processes and database management, computer hardware, machine learning and semiconductors.

In addition to portfolio counseling, Matthew also represents large consumer electronics companies and financial institutions in patent litigation cases, in both traditional courts and AIA post-grant trial proceedings.

Matthew has extensive information technology and cybersecurity experience, serving as a systems engineer and cybersecurity engineer at Lockheed Martin and Electronic Warfare Associates. He played key roles on various cybersecurity and network engineering teams overseeing Federal network infrastructures. As a member of both cybersecurity and network engineering teams servicing agencies such as the Department of Homeland Security, the Department of Defense and the State Department, he contributed to anti-malware and anti-intrusion efforts, conducted anti-intrusion and network vulnerability assessments, and consulted on improving the cybersecurity postures for networks he supported.

Area of Focus

  • Strategic IP Planning
  • Patent Counseling and Prosecution
  • Patent Litigation
  • Inter Partes Reviews and Other Post-Grant Proceedings
  • Data and Software Rights, Patent Rights and Cybersecurity
  • Intellectual Property and Technology

Industry Sectors and Technology

  • Information Technology (IT)
  • Communications
  • Virtual Reality and Augmented Reality
  • Artificial Intelligence and Machine Learning
  • Financial Institutions
  • Blockchain and Distributed Ledger Technology
  • E-Commerce, Internet and E-Payments
  • Cybersecurity Technologies
  • High-Performance Computing and Large-Scale Systems
  • Defense and Space
  • Automotive
  • Cloud and Hosting Services
  • Digital Media
  • Hardware and Semiconductors
  • Mobile
  • Software

Publications

  • Co-author, “Cybercrimes and Cyber Insurance,” Tort, Trial & Insurance Practice Law Journal, ABA (forthcoming)
  • Co-author, ABA Comments to USPTO on Patenting AI Inventions (November 8, 2019)
  • Co-author, ABA Comments to USPTO on its “Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112” (March 7, 2019)

Presentations

  • Adjunct Instructor, Patent Law Clinic, Tulane Law School (August 2018 – May 2019)
  • Presenter, “Engineering an IP Portfolio,” USENIX Large Installation System Administration (LISA) Conference, Nashville, TN (October 31, 2018)

Community Involvement and Pro Bono

  • Anderson v. Florida. Represented client in death row appeal at US Supreme Court advocating for client’s right to a jury under the 6th Amendment.
  • American Legion v. American Humanist Assoc. Represented amicus client in US Supreme Court brief challenging religious display under 1st Amendment.
  • Hispanic Nat’l Law Enforcement Assoc. v. Prince George’s Cnty, MD. Represented police officers and police organizations in their suit challenging police department’s discriminatory practices and policies.

Professional Memberships

  • American Bar Association, Section of Intellectual Property Law
    • Vice-Chair, High-Tech & Software Industry Patents
    • Past Chair, Patent-Eligible Subject Matter Policy Subcommittee for High-Tech & Software Industry Patents
    • Chair, Task Force on Patenting Artificial Intelligence
    • Member, Task Force on Intellectual Property Protections for Artificial Intelligence
  • American Bar Association, Section of Science & Technology Law
  • American Intellectual Property Law Association
  • Federal Circuit Bar Association
  • Intellectual Property Owners Association
  • International Association of Privacy Professionals

Education

  • The George Washington University Law School (LL.M., 2013)
    • Intellectual Property Law
  • Tulane University Law School (J.D., 2012)
  • University of Pennsylvania (M.S., 2008)
    • Computer and Information Technology
  • George Mason University (B.S., 2007)
    • Information Technology

Admissions

  • District of Columbia
  • Virginia
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of Texas
  • U.S. Patent and Trademark Office

Capabilities