Matthew Cutler

Matthew Cutler

Harness, Dickey & Pierce, PLC

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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

Four More IPR Final Written Decisions Go Against Patent Owners

On Monday, March 10th, the PTAB issued four additional Final Written Decisions, each of which resulting in total victory for the Petitioner. The first three were all related - Micron Tech., Inc. v. Board of Trustees of the...more

3/12/2014 - Inter Partes Review Proceedings Patent Litigation Patent Ownership Patents

Trio of Final Written Decisions Go Against Patent Owner

Early results of Inter Partes Review proceedings continue to favor Petitioners as all challenged claims in a threesome of Columbia University patents have been cancelled by the PTAB in Illumina, Inc. v. The Trustees of...more

3/10/2014 - Patent Litigation Patent Ownership Patent Trial and Appeal Board Patents

Communications Between Experts Discoverable in Inter Partes Review

Given the rarity of a granted Motion for Additional Discovery, it is worth noting the circumstances of the Board’s decision in Apple Inc. v. Achates Reference Pub., Inc., IPR2013-00080; -00081 (Paper 58), wherein an exchange...more

3/5/2014 - Discovery Electronic Communications Email Inter Partes Review Proceedings Patent Litigation Patents

Joinder in Inter Partes Review Proceedings Takes Shape

To date, three distinct scenarios relating to joinder have been presented to the Board, each demonstrating inter partes review strategies being employed by Petitioners, as well as the Board’s willingness to join proceedings...more

3/4/2014 - Inter Partes Review Proceedings Joinder paten Patent Litigation

Another Motion to Amend Denied in IPR Final Written Decision

While Patent Owners have finally succeeded in having claims survive an inter partes review proceeding, no Patent Owner has yet to find the magic formula that successfully navigates a motion to amend. In a Final Written...more

2/28/2014 - Inter Partes Review Proceedings Patent Litigation Patents

First Claims Survive Inter Partes Review Proceedings

Patent Owners finally received some good news after a string of pro-Petitioner rulings by the PTAB that saw all challenged claims wiped out in the first 8 Final Written Decisions by the Board. In Microsoft Corp. v....more

2/27/2014 - Inter Partes Review Proceedings Patent Litigation Patent Trial and Appeal Board Patents

Motorola Mobility Takes Down Another Patent Via Inter Partes Review

The early promise of the potential of inter partes review proceedings for patent challengers is proving out, as another petition results in the unpatentability of all challenged claims in Motorola Mobility LLC v. Arnouse...more

2/26/2014 - Inter Partes Review Proceedings Motorola Patent Litigation Patents

Quartet of Final Inter Partes Review Decisions Go Against Patent Owner

The tide of inter partes review proceedings continues to batter Patent Owners, as the PTAB issued four decisions in cases brought by Intellectual Ventures against Xilinx, rendering all challenged claims at issue unpatentable....more

2/25/2014 - Inter Partes Review Proceedings Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents

Dell Ends Up With a Mixed Bag of Results in 2 IPR Petitions Filed Against Acceleron

In two separate challenges of a single patent, Dell had lukewarm success with 23 claims being placed in an inter partes review trial, but three claims and multiple grounds also denied by the Board in Dell, Inc. v. Acceleron,...more

2/6/2014 - Acceleron Dell Inter Partes Review Proceedings Patent Infringement Patent Litigation Patents

Board Will Not Fill In Evidentiary Gaps in Inter Partes Review Petition

In a victory for Patent Owner, Zerto was unable to get any of 13 challenged claims of an EMC Israel Development Center patent into a trial for inter partes review, in Zerto, Inc. v. EMC Israel Development Center, Ltd.,...more

2/5/2014 - Evidence Inter Partes Review Proceedings Patent Infringement Patent Litigation Patent Ownership Patents

Fifteen Months of Inter Partes Review…By the Numbers

A bit delayed by the holidays, Harness Dickey’s latest report on trends and statistics in inter partes review proceedings can be accessed here. We note a couple key trends from the data. First, the popularity of IPR...more

1/20/2014 - Inter Partes Review Proceedings Patent Litigation Patents

Second Inter Partes Review Final Written Decision – Second Patent Goes Down

In a case most notable for a decision restricting a patent owner’s ability to amend claims in inter partes review proceedings, the Board issued its second ever Final Written Decision, rendering all claims at issue in the IPR...more

1/16/2014 - Claim Construction Inter Partes Review Proceedings Patent Infringement Patent Litigation Patents

Incorporation by Reference Not Allowed in Inter Partes Review

Given the Board’s repeated admonitions regarding the speed and efficiency of inter partes review proceedings, it comes as no surprise that the Board has consistently rendered decisions that strengthen and reinforce the strict...more

1/14/2014 - Incorporation by Reference Inter Partes Review Proceedings Patent Ownership

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