Matthew Cutler

Matthew Cutler

Harness, Dickey & Pierce, PLC

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§ 325(d) Used by the Board to Deny Petitions for Inter Partes Review

We wrote last week about the Board’s willingness to come to a different conclusion than that of the original patent examiner on the adequacy of a 131 declaration. Further, we have discussed in the past how the Board has been...more

8/25/2014 - Examiners Inter Partes Review Proceedings Patent Trial and Appeal Board Patents Rule 131

131 Declaration That Was Successful in Prosecution Deemed Insufficient in Inter Partes Review

The Board proved willing to overturn a previous patent examiner’s judgment in another type of issue in Iron Dome LLC v. E-Watch, Inc., IPR2014-00439, where, in instituting an inter partes review trial, the Board found that...more

8/22/2014 - Inter Partes Review Proceedings Patent Litigation Patent Trial and Appeal Board Patents Prior Art

Failure to Identify Structure of Means-Plus-Function Limitation Results in Denial of Ground

Parties have tried different strategies in addressing claim construction in inter partes review petitions. Some have relied strictly on a generic “broadest reasonable interpretation” argument; others have followed a more...more

8/20/2014 - Inter Partes Review Proceedings Patent Infringement Patent Litigation Patents

Board Defines Role of “Common Sense” in Obviousness Arguments

Despite news reports and blog entries to the contrary, all is not doom and gloom for Patent Owners in inter partes review proceedings. In SDI Technologies, Inc. v. Bose Corporation, IPR2014-00346, the Board denied an...more

8/19/2014 - Inter Partes Review Proceedings Patent Infringement Patent Litigation Patents

Board Grants Rare Motion to Submit Supplemental Information

In general, all the evidence a party seeks to rely upon in an inter partes review must be contained in either the Petition (for Petitioner) or Patent Owner Response (for Patent Owner). 37 C.F.R. § 42.123 (b), however, allows...more

8/19/2014 - Inter Partes Review Proceedings Patents Supplemental Evidence

First Petition for Post Grant Review Filed

At long last, a Petitioner has dipped its toes in the Post-Grant Review waters, filing the first ever PGR petition in LaRose Industries, LLC v. Choon’s Design Inc., PGR2014-00008. The popular “Rainbow Loom” is the commercial...more

8/13/2014 - Patent Infringement Patent Litigation Patents Post-Grant Review

Patent Expiry During IPR Means Phillips, not BRI, Applies

We previously discussed one Patent Owner’s attempt to avoid the “broadest reasonable interpretation” (BRI) claim construction standard by disclaiming the remainder of the patent-at-issue’s term. While some uncertainty about...more

8/12/2014 - Claim Construction Inter Partes Review Proceedings Patents

Anticipation Grounds Denied By Board When Elements of Claim Not in Single Embodiment

With increasing frequency, challenge grounds in IPR Petitions are being denied because Petitioners are attempting to shortcut the proper anticipation analysis by combining teachings from various, distinct embodiments in the...more

8/11/2014 - Inter Partes Review Proceedings Patents Prior Art

35 U.S.C. § 315(b) Time-Bar Period Starts Running with 1st Complaint

35 U.S.C. § 315(b) requires that an IPR is barred if the petition is filed more than a year after the date which petitioner is served with a complaint alleging infringement of the patent. In Apple Inc. v. Vernetx, Inc. and...more

8/8/2014 - Apple Inter Partes Review Proceedings Patent Infringement Patent Litigation Patents

Board Allows New Reexamination Filing to Amend Claims at Issue in Concurrent IPR

It is well settled under the AIA that it’s possible to have concurrent proceedings during an IPR. In Game Show Network, LLC and Worldwinner.com, Inc. v. John H. Stephenson (IPR2013-00289), the Board addressed a related issue...more

8/8/2014 - America Invents Act Ex Partes Reexamination Inter Partes Review Proceedings Patent Litigation Patents

Preserving a Complete (and Confidential) Record for Appeal

Now that the first wave of Final Decisions have issued from the PTAB, the question has arisen regarding what to do with sealed documents in an IPR record while the decision is appealed. Pursuant to Patent Office Trial...more

8/6/2014 - Appeals Confidential Information Inter Partes Review Proceedings Patent Trial and Appeal Board Record Preservation

Getting Around the Broadest Reasonable Interpretation Standard

Among the advantages to inter partes review proceedings, for petitioners, is the ability to have the limitations of subject patent claims evaluated pursuant to a “broadest reasonable interpretation” standard (“BRI”), instead...more

8/4/2014 - Claim Construction Patent Infringement Patent Litigation Patents

Board Issues First Precedential Opinion

An ongoing and (surprisingly) often-raised issue in Covered Business Method Reviews has led the Board to issue its first Precedential opinion in an AIA post-grant proceeding. ...more

8/1/2014 - America Invents Act Covered Business Method Patents Covered Business Method Proceedings Patent Trial and Appeal Board Patents Post-Grant Review Precedential Opinion

Board Allows Rare Motion for Additional Discovery

In a relatively rare grant of a Motion For Additional Discovery, in Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc. (IPR2013-00453,, Paper 40), Patent Owner sought additional discovery pertaining to its contention...more

7/9/2014 - Discovery Patent Litigation Patent Trial and Appeal Board Patents

Instruction Not to Answer on Relevance Grounds Improper in IPR Depositions

iStock_000001758213XSmallIn Dynamic Drinkware v. National Graphics, IPR 2013-00131, Patent Owner’s counsel prevented Petitioner from questioning a witness by instructing the witness not to answer questions on the ground of...more

7/9/2014 - Inter Partes Review Proceedings Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents

PTAB Grants Rare Motion for Reconsideration

In PNY Tech., Inc. v. Phison Elec. Corp., (IPR2013-00472, Paper 16), Patent Owner filed a request for rehearing of the Decision on Institution contesting the Board misinterpreted the governing law regarding inherency. To...more

7/7/2014 - Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents

Twenty-One Months of Inter Partes Review – By the Numbers

Welcome to Volume 6 of our IPR-PGR Quarterly Report. This Report brings news of a large spike in Petition filings and some interesting trends that come from a more significant data set derived from Final Written Decisions....more

7/3/2014 - Inter Partes Review Proceedings Patent Applications Patent Litigation Patents

Board Addresses Procedure for Making Board Aware of Supplemental Evidence

There has been, to date, much confusion surrounding the propriety and timing of filing “supplemental evidence” with the Board. In Sealed Air Corporation v. Pergis Innovative Packing, Inc., IPR2013-00554 through...more

7/2/2014 - Patent Litigation Patent Trial and Appeal Board Patents Supplemental Evidence

Sur-Reply Authorized By Board in Response to New Expert Testimony in Petitioner Reply by Patent Owner

The PTAB has, to date, been very strict about the timeline of events in an inter partes review proceeding, as well as ensuring the proceedings are streamlined. That’s what makes the Board’s decision in Zodiac Pool Systems,...more

7/1/2014 - Expert Testimony Inter Partes Review Proceedings Patent Litigation Patent Trial and Appeal Board Patents Sur-Reply

Declaratory Testimony from File History is “Affidavit Testimony” Which Requires Deposition

Most declaration testimony in an inter partes review proceeding is newly developed as part of the IPR. On occasion, however, parties to an IPR have used previously generated declarations in support their positions. In...more

6/30/2014 - Affidavits Cross Examination Declaration Depositions Expert Testimony Inter Partes Review Proceedings Patent Trial and Appeal Board Patents Testimony

Expert Declaration Not Allowed as Supplemental Information Related to Claim Constructions

Unhappy with the Board’s claim constructions, Patent Challenger in Rackspace US, Inc. and Rackspace Hosting, Inc. v. PersonalWeb Technologies, LLC and Level 3 Communications, (IPR2014-00057, IPR2014-00058, and IPR2014-00062)...more

6/27/2014 - Claim Construction Expert Testimony Inter Partes Review Proceedings Patent Litigation Patents Supplemental Examination

Rare Motion to Strike New Evidence in Reply Brief Granted by PTAB

When faced with the issue of whether a reply brief contains new evidence, the PTAB has, to date, mostly punted on the issue – waiting until the Final Written Decision to assess the issue, when it is much more familiar with...more

6/26/2014 - Patent Litigation Patent Trial and Appeal Board Patents

Claim Term of Expired Patent Given non-BRI Construction

An interesting argument relative to the construction of claim terms in an inter partes review proceeding has been percolating in recent months. Namely – what claim construction should be applied when a patent subject to...more

6/25/2014 - Claim Construction Inter Partes Review Proceedings Patent Litigation Patents

Successfully Defends Another Patent in Inter Partes Review

The news has been dreary, to date, for Patent Owners in Inter Partes Review proceedings. In view of that environment, we are proud to announce that Harness Dickey has successfully defended a second patent in an IPR...more

3/28/2014 - Inter Partes Review Proceedings Patent Litigation Patents

More PTAB Motion to Amend Guidance in Inter Partes Reviews

In view of the continued denial of Motions to Amend in inter partes review practice (no motions have been granted to date), it is worth noting a recent decision, from well-respected Judge Jameson Lee, that provides...more

3/14/2014

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