Brian Matlock

Partner, Co-Head of Litigation Practice and Intellectual Property Practice

bmatlock@yklaw.us

(212) 837-2600

Location: Irvine, CA, Los Angeles, CA

Practice Areas & Industries:

Brian Matlock is a partner and co-chair of the YK Law LLP Commercial Litigation Practice and is based in the Los Angeles, CA and Irvine, CA offices.

Brian Matlock practices broadly in the areas of litigation and dispute resolution, patents and intellectual property, corporate law, securities regulation, and corporate restructuring and business bankruptcy. He advises clients in shareholder disputes, corporate structured transactions, technology transfer and licensing, corporate and venture funding, mergers/acquisitions, and securities/anti-fraud litigation. His clients are primarily in the manufacturing, high technology/software/Internet, energy and utilities, medical devices, chemicals and life sciences industries.

Brian is admitted in the Central, Eastern, and Northern District Federal Courts and Federal Bankruptcy Courts in California and all Superior Courts. He is also admitted in the Eastern and Western District Federal Courts in Missouri, where was raised and is a member of the Missouri Bar. In addition, Brian has handled numerous cases in Federal Courts in various jurisdictions on a Pro Hac Vice basis.

Brian previously worked as licensing associate in University technology transfer, assisting faculty and investors in launching cutting edge technology in therapeutics, diagnostics, chemicals, advanced materials, software and energy. Prior to that, he worked as corporate counsel in house for Sanmina-SCI, a Fortune 500 electronics manufacturer and developer, where he directed all of the company commercial contract, corporate law, intellectual property and patent related matters. While at Sanmina, he directed all company patent and intellectual property litigation in various jurisdictions worldwide and matters before the International Trade Commission.

Education

Washington University in St. Louis School of Law, LL.M in Technology and Intellectual Property Law
McGeorge School of Law, JD, Sacramento, CA
Washington University in St. Louis, MBA
University of Missouri, Columbia, BS Chemical Engineering

Bar Admissions

California
Missouri

Memberships

American Intellectual Property Law Association; Licensing Executives Society
Anthony M. Kennedy Inns of Court, Sacramento, CA

Recognition

Ranked 1st in LLM Technology and Intellectual Property program, Washington University in St. Louis
University of Pacific, JD, honors with distinction; Traynor Society
Anthony M. Kennedy, Inns of Court, Sacramento, CA

Publications

May 10, 2013 “The eBay Test, Non-Practicing Entities, and the Domestic Industry Requirement of Section 1337: Which NPE’s Should Qualify for the Licensing Exception?”, Washington University School of Law Advanced Patent Law Annual Summaries
July 2014 “Trends in Patent Claim Construction Case Law”, National Association of Patent Practitioners Annual Conference, Las Vegas, NV
March 2015 “Top Ten Issues for Fundable Startups”, Investors and Inventors Boot Camp, Silicon Valley, CA

Experience

Notable transactions handled by Brian Matlock include:

Round C Equity Funding Private Securities Solar Plus Storage Equipment and Software Integrator; Integrated Energy Storage Provider San Francisco, CA. Led intellectual property due diligence of M&A restructuring and led team on an international intellectual property portfolio development, procurement and protection strategy, including intellectual property comprising computer implemented methods patents, software patents and copyright, domain names, trade dress, trademarks, and a company-wide trade secret compliance process, leading a team including two attorneys, a patent agent, and two paralegals. Successfully completed tasks required to close a $40MM funding round based largely on valuation of intangible assets, largely intellectual property and goodwill of company.
Exclusive License Defense and Electronics Components Maker, Fremont, CA. Draft and negotiate terms and conditions; execute exclusive license deal for a global provider of defense systems utilizing client passive electronics devices and power supply technology. Worked closely w. client inventor/CEO to develop key milestone timing in coordination w. licensee commercialization and development timelines.
Corporate Formation Delaware Corporation and Board Related Issues Governance; Stock Option Plan; Shareholder Agreement; Drafted Asset Purchase Agreement; Assignment of Inventors; Master Services Agreement and Software as a Service Agreement, Mapping Software Underground Utilities, GIS Technologies Mapping, Novato, CA.
California LLC Formation and Board and Shareholder Related Actions; Buy Sell Agreement; Integrated Energy Storage, LLC, Stockton, CA. Inventor assignments of patents and all intellectual property to company.
Chapter 11 Bankruptcy Plan of Reorganization; Real Estate and Stables Business, Northern District Bankruptcy Court of California, Case No. Case No.: 13-41088 (2013). Led reorganization team of three attorneys, two paralegals, a Certified Public Accountant, and Management Consulting professional to a successful confirmation and completion of a complex Chapter 11 Plan of Reorganization for Real Estate and Business Restructuring Matter.
Corporate Law Directors and Shareholders Dispute; In Re Mechanical Contractor; Superior Court San Jose, Case No. 1-12-CV-236673 (2012). Developed a trial strategy and corporate valuation strategy with client. Obtained a verdict in favor of our client resulting in a buyout of the opposing party and a restructuring of client’s business after two years of complex litigation and a company valuation as a result of various motions filed and argued successfully before Superior Court.
Copyright Infringement Litigation and Trial, Book Author; Author. v. Publisher, et. al., Central District of California, Case No. CV08-05321 RSWL (Ctx) (2009). Obtained verdict in trial in 2011 in Central District of California, Los Angeles, before the Honorable Justice Ronald Lew. Directed, as First Chair Attorney, and led a team of two attorneys and two paralegals to develop with client author a trial strategy in Copyright Infringement and Commercial dispute, resulting in an approximately $250K verdict. .
Copyright Infringement and Trade Secret Misappropriation, Software for Storage Devices; Software Provider v. Storage Manufacturer, Northern District of California, Case No. C: 11-03025 PSG (2011). Obtained a favorable settlement for international client from China in trade secret and copyright dispute over software and methods. Directed and led a team of a patent attorney, two litigators, and two paralegals.
Trade Secret Misappropriation and Trademark Infringement, Winery Insulation Systems; Technology Development Corp. v. Winery Engineering Provider, Northern District of California, Case No. CV11-04268 (2011). Obtained a favorable multiple six-figure lump sum plus a structured settlement for international client from Australia in trade secret, trademark and commercial dispute over client’s proprietary wine industry cooling methods and processes. Directed and led a team of one intellectual property attorney, two litigators, and two paralegals.
Exclusive Technology License Buried Capacitance Technolgy, San Jose, CA. Worked closely w. licensee counsel to negotiate terms and execute deal for $3MM plus royalties, 3 year exclusive license agreement.
Patent and Intellectual Property Litigation; Licensee PCB Fabricator. v. Global Licensor, et. al., International Trade Commission, Case for certain pre-pregs, laminates, and printed circuit boards; Case No. 337-TA-659 (2007). Worked with outside counsel in ITC Section 337 matter for Exclusion Order. Assisted in reaching terms for settlement.
Trade Secret Misappropriation Mediation, Heat-Exchange Systems; Heat Exchange Technology and Sugar Co., Superior Court Solano County, Case No.: FCS 027042 (2006). Obtained a favorable approximately $500k lump sum settlement and contract for new business for emerging growth client from Benicia, CA in a trade secret litigation dispute settled during a JAMS mediation regarding client’s proprietary thermal heat exchange cooling apparatus and methods. Directed and led a team of one litigator, and two paralegals while serving as lead and intellectual property counsel. First case as an attorney ends successfully!