is a patent attorney at LeClairRyan’s Detroit office. He counsels clients on how to protect their inventions by providing patentability and infringement analyses and drafting and prosecuting both U.S. and foreign patent applications. He focuses on patent prosecution in the electro-mechanical industry, including automotive components, precision work piece processing systems, security display cases, consumer products, and augmented reality applications, among other fields. In addition, Mr. Epstein also has experience handling trademark prosecution and copyright protection matters. While in law school, Mr. Epstein was involved with Michigan State University’s Intellectual Property Clinic where he helped local entrepreneurs protect their intellectual property.
For more information or to contact Matthew, please visit his Firm Profile Page.
A company must be strategic in any business decision it makes in order to ensure that it takes the necessary measures to avoid liability for its actions. With respect to patent infringement, and specifically willful patent infringement, the different approaches to determining which measures to take and when to take such measures have been repeatedly challenged in light of a number of court decisions in recent years. To set the scene, the Federal Circuit held in Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (1983) that a potential infringer has an affirmative duty to exercise due care to determine whether or not he or she is infringing. This placed the burden on the potential infringer to seek competent counsel and obtain either a non-infringement opinion or invalidity opinion prior to undertaking the possible infringing activities. This would prevent a finding of willful infringement and treble damages.