J. Matthew Miller III

Registered Patent Attorney
United States Patent and Trademark Office

J. Matthew Miller III works with the firm’s Intellectual Property Practice Group. He has extensive experience in assisting clients in obtaining and enforcing patents, trademarks, trade secrets, and copyrights. Matt graduated from Duke University in 2001 with a degree in Computer Science and worked as a software engineer for several years. Now, Matt applies this knowledge in his practice.

Patents

As a Registered Patent Attorney, Matt litigates patent disputes, as well as prosecutes patent applications before the United States Patent and Trademark Office. Matt’s patent prosecution experience includes computer software, mechanical inventions, and inventions in the field of oil and gas exploration and production.

Representative Patents

• United States Patent No. 11,037,430 (obtained utility patent protection for a system and method for providing child protection alerts.)
• United States Patent No. 11,058,441 (obtained utility patent protection for a laser guided surgical tool.)
• United States Patent No. 8,572,290 (obtained utility patent protection for a system and architecture for robust management of resources in a wide-area network).
• United States Patent No. 8,725,663 (obtained utility patent protection for a system, method, and computer program product for data mining applications).
• United States Design Patent No. D679,312 (obtained design patent protection for an ornamental design for eyeglasses).

Representative Cases

• Red Diamond, Inc. v. Southern Visions, LLP, Patent Trial & Appeal Board Case Nos. PGR2019-00045; IPR2019-01661; IPR2019-01662; IPR 2019-01671; IPR 2020-00001 (represented Patent Owner in the food service industry in five cases involving the USPTO pilot program for revised motions to amend.)

Copyrights

Matt has a great deal of experience advising clients on the intricacies of obtaining ownership of copyrights, registering copyrights with the United States Copyright Office, and enforcing copyrights through the use of demand letters and litigation. Matt’s copyright experience includes software products, mobile applications, websites, books, and advertising materials. Matt has also worked with Tulane Law School’s Durationator project and written academically on copyright policy.

Representative Matters

• Future World Electronics LLC v. Over Drive Marketing LLC et al., N.D. Tex. Case No. 12-2124, E.D. Tex. Bankr. Case No. 14-41478 and Adversary Proceeding No. 14-4081 (successfully obtained judgment for willful copyright infringement and attorney’s fees, as well as later judgment in bankruptcy court denying discharge of the judgment debt).
• Copyright Reg. No. TXu001939046 (obtained copyright registration for computer software for use in the insurance industry).
• Copyright Reg. No. VAu001257973 (obtained copyright registration for medical illustration).
• Copyright Reg. No. VA0001802073 (obtained copyright registration for commercial print advertising materials).
• Copyright Reg. No. TX0008396976 (obtained copyright registration for mobile application).

Trademarks

Matt’s trademark practice includes both federal trademark prosecution and litigation, both in federal district courts and before the Trademark Trial and Appeal Board. Matt also served as an Adjunct Professor and Law School Faculty Clinic Supervisor for Tulane Law School’s Trademark Lab, supervising law students in providing pro bono legal services.

Representative Matters

• Jolie Design & Decor, Inc. et al. v. CeCe Caldwell's Paints, LLC et al., E.D. La. Case No. 12-cv-02387 (successfully settled trademark dispute).
• Annie Sloan Interiors, Ltd. v. Studio van Gogh, Trademark Trial and Appeal Board Opposition No. 91208788 (successfully opposed federal trademark registration).
• Annie Sloan Interiors, Ltd. v. Chalk Country Paint, LLC, Trademark Trial and Appeal Board Opposition No. 91224203 (successfully opposed federal trademark registration).
• Annie Sloan Interiors, Ltd. v. Websters Chalk Paint Powder, LLC, Trademark Trial and Appeal Board Opposition No. 91209403, Cancellation No. 92056863, and E.D. La. Case No. 16-2929 (successfully reached settlement of multi-forum trademark litigation).
• Your Preferred Printer, LLC v. United Wholesale, LLC et al., E.D. La. Case No. 11-2954; N.D. Ill. Case No. 12-5868 (successfully defended multi-forum trademark and trade dress dispute).
• World Wrestling Entertainment, Inc. v. doe et al., E.D. La. Case No. 18-3182 (assisted client in counterfeit goods enforcement proceeding).

Internet, Domain Names, and Websites

Matt’s practice includes advising clients on a variety of internet-related issues, including domain name disputes, which involve a mix of technical know-how, knowledge of the UDRP arbitration system, and trademark law. Matt also counsels clients on website terms of service, privacy policies, and website copyright issues.

Representative Matter

• Annie Sloan Interiors, Ltd. v. Harisma Cahyani, FA 1510001644318 (Nat. Arb. Forum Dec. 7, 2015) (successfully obtained transfer of domain name registered in bad faith through use of Uniform Domain-Name Dispute Resolution Protocol (UDRP) arbitration proceedings).

Background

Matt graduated from Duke University in 2001 with a B.A. in Computer Science, also majoring in Psychology. He received his J.D. from Tulane Law School in 2009, graduating cum laude. During law school, Matt created and operated several websites which have been noted in national media. He also worked with the "Durationator" project of the Tulane Center for Intellectual Property Law and Culture, creating the logic representation language and accompanying logic engine enabling the site's detailed analysis of worldwide copyright law. As a result, Matt was named as a co-inventor on an international patent application.

Prior to law school, Matt worked as a Software Engineer in New Orleans and is named as a co-inventor on two United States Patents in the fields of image processing and video surveillance. Matt has technical experience with computer programming in a variety of programming languages, databases, web application development, managing Linux-based computer servers, open source software, search engine optimization, and internet advertising. Matt also developed the Louisiana Civil Code and Louisiana Code of Civil Procedure mobile applications for iPhone and iPad.