Matthew Cutler

Matthew Cutler

Harness, Dickey & Pierce, PLC

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Federal Circuit Maintains “Substantial Evidence” Standard of Review in AIA Post Grant Proceedings

On April 26, 2016, the Federal Circuit denied a petition seeking rehearing en banc of its application of the “substantial evidence” standard of review in post-grant administrative proceedings, in the case of Merck & Cie v....more

4/27/2016 - Agency Deference America Invents Act Inter Partes Review Proceedings Merck Patent Litigation Patent Trial and Appeal Board Post-Grant Review Substantial Evidence Standard

Supreme Court Hears Arguments in Cuozzo Case

We should soon find out whether the Federal Circuit will again face reversal at the hands of the Supreme Court in a patent case. On April 25, 2016, the Court heard oral arguments in the case of In re Cuozzo, the first IPR...more

4/26/2016 - Broadest Reasonable Interpretation Standard Claim Construction Cuozzo Speed Technologies Cuozzo Speed Technologies v Lee Inter Partes Review Proceedings Judicial Review Patent Litigation Patent Trial and Appeal Board SCOTUS USPTO

PTO Issues Final Rule Changes to IPR Proceedings

The PTO issued its long-anticipated rule changes for IPR and PGR proceedings. These rules follow up on immediate changes to the rules that were implemented about a year ago. Generally considered pro-Patent Owner changes to...more

4/6/2016 - Claim Construction Covered Business Method Proceedings Discovery Duty of Candor Expert Testimony Final Rules Inter Partes Review Proceedings Patent Litigation Patent Owner Preliminary Response Patent Trial and Appeal Board Post-Grant Review Real Party in Interest USPTO

Federal Circuit Reverses Because PTAB Relied Upon Argument First Raised at Oral Argument

In a decision today from the Federal Circuit, in Dell Inc. v. Acceleron, LLC, 2015-1513, -1514 (March 15, 2016), involving US Patent No. 6,948,021, the PTAB was reversed because its Final Written Decision relied upon a new...more

3/17/2016 - Claim Construction Inter Partes Review Proceedings Oral Argument Patent Invalidity Patent Litigation Patent Owner Preliminary Response Patent Trial and Appeal Board Reversal

39 Months of Inter Partes Review – By the Numbers

Welcome to the 12th volume of our IPR-PGR Report, reporting on the statistics that underlie Inter Partes Review and Post Grant Review proceedings. This quarter marked the second in a row in which the number of IPR filings per...more

2/16/2016 - Administrative Proceedings Corporate Counsel Inter Partes Review Proceedings Motion to Amend Motion To Stay Patent Litigation Patent Trial and Appeal Board Post-Grant Review USPTO

Federal Circuit Explores Expert Declaration as IPR Supplemental Evidence

Getting caught up on a Federal Circuit decision from late last year, we take a look at the Federal Circuit’s decision in Redline Detection, LLC v. Star Environtech, Inc. (2015-1047), decided on December 31, 2015. In this...more

2/15/2016 - Burden of Proof Expert Testimony Inter Partes Review Proceedings Patent Litigation Patent Trial and Appeal Board Supplemental Evidence

Board Explains the Process for Evidentiary Objections—and Illustrates the Severe Penalty for Not Following It

Practitioners who are used to district court litigation may be surprised—and tripped up—by the rules for objecting to evidence in IPRs, which differ significantly from the approach used in litigation. The Board’s Final...more

2/9/2016 - Corporate Counsel Federal Rules of Evidence Inter Partes Review Proceedings Motion to Exclude Objections Patent Owner Preliminary Response Patent Trial and Appeal Board Supplemental Evidence Young Lawyers

BioPharma Patents: Quick Tips & News - January 2016

Subject matter eligibility and “laws of nature.” As reported in our July 2015 newsletter, the Federal Circuit invalidated claims to a method of diagnosing fetal abnormalities without amniocentesis. This precedent—if it...more

2/1/2016 - Inter Partes Review Proceedings Merck Patent Invalidity Patent Litigation Patent Trial and Appeal Board Patent-Eligible Subject Matter Pharmaceutical Patents Preponderance of the Evidence Reduction to Practice Terminal Disclaimer USPTO

Federal Circuit Issues Ironic Decision Reversing PTAB For Not Providing Enough Analysis

The PTAB was rebuked by the Federal Circuit on January 22nd for failing to provide an adequate description of its reasoning for finding the claims of the challenged patent obvious in an inter partes review proceeding. In...more

1/29/2016 - Inter Partes Review Proceedings Obviousness Patent Litigation Patent Trial and Appeal Board Rule 36

“Obvious to Try” Rationale Insufficient to Institute IPR Trial Directed to Venlafaxine

The rate at which the Board denies inter partes review petitions has been climbing in recent months, and will be helped along by the Board’s denial of review in Neptune Generics v. Auspex Pharm., IPR2015-01313. Neptune...more

1/15/2016 - Inter Partes Review Proceedings Patent Litigation Patent Trial and Appeal Board Pharmaceutical Patents Prior Art

PTAB Rejects Challenge to Onglyza® Patent

The lower burden of proof associated with inter partes reviews should make IPRs attractive to generic pharmaceutical companies, but even with that lower burden, success is not guaranteed, as illustrated by IPR2015-01340. ...more

12/23/2015 - AstraZeneca Generic Drugs Inter Partes Review Proceedings Mylan Pharmaceuticals Obviousness Patent Litigation Patent Trial and Appeal Board Pharmaceutical Patents

Federal Circuit Addresses Substantial Evidence as Standard of Review in IPR

In June, 2014, the PTAB declared all challenged claims in two IPR trials brought by Gnosis S.p.A. to be unpatentable based on obviousness grounds. Gnosis S.p.A. v. S. Ala. Medical Science Found., IPR2013-00116 and Gnosis...more

12/18/2015 - Inter Partes Review Proceedings Merck Obviousness Patent Litigation Patent Trial and Appeal Board Preponderance of the Evidence Substantial Evidence Standard

The PTAB Can Institute Post Grant Trial on a Legal Ground Not Raised in the Petition

In In re Cuozzo Speed Tech., the patentee tried (and failed) to challenge the Board’s decision to institute an IPR on the basis of a combination of references that the petitioner had never suggested. However, even in Cuozzo...more

12/16/2015 - Anticipation Apple Covered Business Method Proceedings Inter Partes Review Proceedings Obviousness Patent Trial and Appeal Board Post-Grant Review

Sec. 103(c) Saves Patent Claims in IPR Final Written Decision

In a recently-issued Final Written Decision, the Board thoroughly explained the sometimes tricky issue of the shift, if any, of the burden of proof/production in an IPR proceeding. Global Tel*Link Corp. v. Securus Techs.,...more

12/10/2015 - Burden of Proof Inter Partes Review Proceedings Patent Litigation Patent Trial and Appeal Board Popular Prior Art

Federal Circuit Upholds Constitutionality of Post-Issuance Trials

Last week, the Federal Circuit held in MCM Portfolio LLC v. Hewlett-Packard Co., _____ F.3d _____ (Fed. Cir. 2015) that inter partes review trials do not violate Article III and the Seventh Amendment of the...more

12/8/2015 - Article III Hewlett-Packard Inter Partes Review Proceedings Post-Grant Review SCOTUS Seventh Amendment USPTO

Federal Circuit Weighs in on IPR Again, and Judge Newman Regains Her Footing as Pro-Patent Crusader

The Federal Circuit issued another substantive, IPR-related opinion today in Prolitec, Inc. v. ScentAir Techs., Inc., 2015-1020 (Fed. Cir. Dec. 4, 2015) (appealing from IPR2013-00179). The Board had determined that each of...more

12/7/2015 - Anticipation Claim Construction Inter Partes Review Proceedings Motion to Amend Patent Trial and Appeal Board Substantial Evidence Standard

PTAB Finds Different Claim Terms Have the Same Meaning

One of the classic canons of claim construction is that different claim terms in a patent are presumed to have different meanings. The Board found an exception to that general rule in Air Liquide Large Indus. v. Praxair...more

12/1/2015 - Broadest Reasonable Interpretation Standard Claim Construction Patent Litigation Patent Trial and Appeal Board Patents Young Lawyers

Federal Circuit Issues Second Reversal in Favor of a Patent Owner

The Federal Circuit has picked up the pace of issuing actual written opinions regarding PTAB decisions, instead of its previous, steady diet of Rule 36 Judgments. Today, the Court issued its second opinion reversing a Board...more

11/30/2015 - Claim Construction Inter Partes Review Proceedings Patent Litigation Patent Trial and Appeal Board Plain Meaning Popular Reversal

3 Years of Inter Partes Review – By The Numbers

Welcome to Harness Dickey’s Report on Litigation Practice before the United States Patent Office. Created by the America Invents Act, Inter Partes Review proceedings have already changed the face of patent litigation. Lower...more

11/25/2015 - Inter Partes Review Proceedings Motion to Amend Motion To Stay Patent Litigation Patent Owner Preliminary Response Patent Trial and Appeal Board Patents Young Lawyers

PTAB’s Ambiguous Language Is Basis For Federal Circuit Vacating PTAB’s Opinion

Yesterday, the Federal Circuit remanded a PTAB decision for just the second time. In Ariosa Diagnostics v. Verinata Health, Inc., the Federal Circuit vacated and remanded the Board’s decision upholding the validity of...more

11/18/2015 - Ambiguous Patent Trial and Appeal Board Patents Popular Prior Art Remand Vacated

Board Offers New Technique to Solve an Often-Raised IPR Issue

One panel of the PTAB has introduced a technique that may help solve the oft-raised complaint that a reply brief from Petitioner contains new evidence and/or argument not raised in the Petition. In early decisions, when this...more

11/12/2015 - Evidence Inter Partes Review Proceedings Patent Litigation Patent Trial and Appeal Board Patents

Lessons Learned from a Rare CAFC Opinion on an IPR Matter

To date, the Federal Circuit has issued Rule 36 affirmances in over 80% of the cases it has heard. Thus, when a new, substantive opinion is issued by the Court, it is an opportunity to learn. On November 5th, the Federal...more

11/10/2015 - CAFC Inter Partes Review Proceedings Patent Litigation Patent Trial and Appeal Board Patents Popular Rule 36

Don’t Let Protective Orders Trip Up Your IPR Strategy

The PTAB recently addressed what is a common – but unnecessary – problem created by a protective order issued in a parallel Federal District Court litigation. In B/E Aerospace Industries, LLC v. MAG Aerospace Industries,...more

11/6/2015 - Additional Discovery Confidential Information Discovery Inter Partes Review Proceedings Issue Preclusion Parallel Claims Patent Infringement Patent Litigation Patent Trial and Appeal Board Patent-in-Suit Patents Protective Orders Young Lawyers

Federal Circuit Clarity on Key IPR Issues May Be on the Way

We are entering an interesting phase in the development of inter partes review proceedings as more and more of the contours of these proceedings are being heard by the Federal Circuit. To date, the Federal Circuit has made...more

11/5/2015 - Appeals Apple CAFC Inter Partes Review Proceedings Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents Popular Rule 36

Split 5-Judge Panel Allows Issue Joinder as a Way Around the One-Year Filing Deadline

The Board continues to grapple with the issue of joinder where a party seeks to join a petition that would otherwise be time-barred with an earlier-filed petition. In Zhongshan v. Nidec Motor, an expanded 5-judge panel–with...more

10/19/2015 - Filing Deadlines Inter Partes Review Proceedings Joinder Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents Petition For Rehearing Prior Art Public Interest

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