Matthew Horton

Senior Counsel

Overview

Matthew Horton is a senior counsel and intellectual property lawyer with Foley & Lardner LLP. 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.

Matthew regularly helps clients with strategic IP portfolio development and patent litigation. 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 has also advised clients on cybersecurity and data privacy issues related to the launch of new technologies. 

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.

Experience

Portfolio Development

Matthew regularly counsels clients on developing strategic intellectual property portfolios, helping them to identify and develop business-oriented and industry-oriented portfolio strategies. Matthew has successfully drafted and 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.

  • Counseled biometrics “unicorn” with growing a patent portfolio protecting the company’s pioneering artificial intelligence and machine-learning technologies and products.
  • Counseled late-stage, wireless-charging startup with developing a patent portfolio to protect innovative technology and cultivate investor engagement.
  • Provided midsize and large financial institutions strategic guidance in identifying and protecting inventions for secure payments, blockchain and distributed ledger applications, and mobile applications.
  • Advised electronics and software companies of all sizes, from pre-seed startups to Fortune 100 corporations, with identifying protectable inventions and preparing and prosecuting value-add patents.

Patent Litigation

In addition to portfolio counseling, Matthew also represents large consumer electronics companies and financial institutions in patent litigation cases. Matthew has represented clients in federal district and appellate court and in post-grant proceedings at the U.S. Patent & Trademark Office.

  • Defended large electronics and mobile device company in lawsuits asserting telecommunications and mobile application patents against the company’s commercial products.
  • Defended large banks in lawsuits asserting patents for mobile applications, cloud software, cybersecurity, and help desk systems.
  • Represented large medical device company asserting its patents against a competitor in district court.
  • Counseled large mobile application company in post-grant invalidation proceedings at the USPTO to invalidate patents asserted against company in district court.
  • Defended mobile electronics startup against competitor who filed a post-grant invalidation action at the USPTO seeking to invalidate the client’s patents. 

Publications

  • Co-author, “Recent Developments in Cybersecurity and Data Privacy,” Tort Trial & Insurance Practice Law Journal, ABA (Spring 2020)
  • 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

  • ABA, Section of Intellectual Property Law
    • 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
    • Past Member, Task Force on Intellectual Property Protections for Artificial Intelligence
  • ABA, Section of Science & Technology Law
  • American Intellectual Property Law Association (AIPLA)
  • Federal Circuit Bar Association
  • Intellectual Property Owners Association (IPO)
  • International Association of Privacy Professionals (IAPP)

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

Insights