Matthew Cutler

Matthew Cutler

Harness, Dickey & Pierce, PLC

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Latest Publications


Unavailability of IPR Witness for Deposition Undercuts Testimony

Testimony from a witness in a prior reexamination, or other, proceeding may be useful information to a party in inter partes review proceedings. The party propounding such testimony should be prepared, however, to produce...more

12/24/2014 - Depositions Expert Witness Inter Partes Review Proceedings Patent Trial and Appeal Board Patents

PTAB Will Not Review Contract Issues Even if They Relate to Standing

Whether a Petitioner breached a contract, that limited its ability to challenge a patent, is an issue outside the purview of the PTAB, per a recent decision in Ford Motor Company v. Paice LLC & The Abell Foundation, Inc.,...more

12/19/2014 - Arbitration Agreements Breach of Contract Contract Disputes Ford Motor Inter Partes Review Proceedings Patent Trial and Appeal Board Patents Standing

IPR Motions for Joinder are Common, But Not Automatic

Recent statistics show that motions for joinder are granted about 60% of the time. While parties can, therefore, expect a sympathetic ear regarding these motions, they are not always successful and it is worth noting the...more

12/19/2014 - Inter Partes Review Proceedings Joinder Patent Trial and Appeal Board Patents Samsung

Rationale from Denied Ground Used By PTAB In Final Written Decision

Lost a challenge ground in the Board’s Decision to Institute? The Board has given some hope that such denied grounds may still of use in an IPR proceeding in McClinton Energy Group, LLC v. Magnum Oil Tools International,...more

12/17/2014 - Inter Partes Review Proceedings Motion for Reconsideration Patent Trial and Appeal Board Patents

PR Obviousness Challenge of Design Patent Denied

Through two years of inter partes review practice, only 8 petitions were filed that were directed to design patents (out of 1773 total petitions). Given this limited number of petitions, lessons are going to be difficult to...more

12/12/2014 - Design Patent Inter Partes Review Proceedings Obviousness Patents

IPR Patent Owner Succeeds in Antedating Key Prior Art

A witness credibility battle erupted in Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, where the Board found that Patent Owner antedated a key prior art reference…despite the fact that the inventor testified...more

12/9/2014 - Inter Partes Review Proceedings Inventors Patent Trial and Appeal Board Patents Prior Art Witness Statements

Pyrrhic Victory: IPR Petition Denied Because Claims Indefinite

Patent Owner won a Pyrrhic victory in Facebook v. TLI Communications, IPR2014-00566, wherein the Board denied the Petition, but for a reason that calls into question the future viability of the patent-in-suit. Namely, the...more

12/5/2014 - Facebook Indefiniteness Inter Partes Review Proceedings Patent Trial and Appeal Board Patent-in-Suit Patents Petitions for Review

Third IPR Petition Directed to Same Patent Denied under 35 U.S.C. § 325(d)

One of the advantages for Petitioners of inter partes review practice, to date, is the PTAB’s willingness to reconsider prior decisions by the Patent Office relating to patentability. Previous Office determinations of...more

12/3/2014 - Inter Partes Review Proceedings Medtronic Patent Trial and Appeal Board Patents Petitions for Review

Board Denies Motion to Stay IPR Despite 3 Other Co-Pending Challenges

Buried under the weight of four different challenges to its patent, Patent Owner sought relief via a motion to stay one of the pending IPR proceedings. But, in Rackspace US, Inc. and Rackspace Hosting, Inc. v. PersonalWeb...more

12/3/2014 - Inter Partes Review Proceedings Motion To Stay Patents

Patent Public Advisory Committee 2014 Annual Report

The Patent Public Advisory Committee issued its Annual Report regarding fiscal year 2014. The PPAC Report contains a number of interesting points, but our review, of course, will focus on the PTAB and post grant proceedings. ...more

12/2/2014 - Annual Reports Patent Trial and Appeal Board Patents Post-Grant Review

Proposed Claims in IPR Motions to Amend Can Now Be Placed in Appendix

The PTAB recently sent out an email alert, directing practitioners to its order providing guidance on Motions to Amend in Corning Optical Comm. RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19. The Order stemmed from...more

11/26/2014 - Motion to Amend New Guidance Patent Trial and Appeal Board Patents

Draft IEEE Standard Not a Printed Publication in IPR

Whether the art presented in an inter partes review petition is a printed publication has arisen more frequently as Petitioners push the envelope to take advantage of the benefits of IPR proceedings. To that end, the PTAB was...more

11/25/2014 - Inter Partes Review Proceedings Patents Printed Publications Prior Art

IPR Petition Time-Barred Even Where First Lawsuit “Dismissed” and Folded Into Later Lawsuit

The PTAB has been presented, of late, several cases that call upon the Board to consider whether a complaint served on a defendant is sufficient to trigger the a time-bar pursuant to 35 U.S.C. § 315(b)....more

11/21/2014 - eBay Inter Partes Review Proceedings IP Assignment Agreements Patent Infringement Patent Trial and Appeal Board Patents Statute of Limitations

Federal Circuit Weighs in on Stay in View of Covered Business Method Review

The first few decisions from the Federal Circuit are starting to trickle in and are sure to bring more upheaval to Patent Office post-grant procedures. In Versata Software, Inc., et al. v. Callidus Software, Inc., the Court...more

11/21/2014 - Covered Business Method Proceedings Discovery Discovery Schedule Motion To Stay Patent Trial and Appeal Board Patents Post-Grant Review Software Software Developers

Proving Real-Party-In-Interest in IPR Remains Elusive

On difficult-to-prove issues in IPR proceedings, it is interesting to watch parties adapt to PTAB decisions, in the hopes of overcoming the long odds of success. One such issue is proving that a third party, whose involvement...more

11/20/2014 - Inter Partes Review Proceedings Patent Infringement Patent Trial and Appeal Board Patents Real Party in Interest

PTAB Orders Halt to “Speaking” Objections in Deposition

The Board continues to strongly enforce its regulations regarding the behavior of attorneys defending depositions in inter partes review proceedings. In an order entered in both Medtronic, Inc., Medtronic Vascular, Inc., and...more

11/19/2014 - Depositions Inter Partes Review Proceedings Medtronic Objection Procedures Patent Trial and Appeal Board

PTAB Reiterates Prohibition Against New Arguments at IPR Oral Hearing

One of the most litigated aspects of inter partes review proceedings is the issue of whether an argument presented in a petitioner reply or at oral hearing is “new.” This issue arose in Level 3 Communications, LLC v. AIP...more

11/18/2014 - Inter Partes Review Proceedings Oral Argument Patent Trial and Appeal Board Patents

Copyright Notice on Prior Art Establishes Priority Date in IPR

The PTAB weighed in on whether a copyright notice can be sufficient to demonstrate the priority date of a printed publication in FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, -434, -608, and -609. In Flir,...more

11/17/2014 - Copyright Inter Partes Review Proceedings Patent Trial and Appeal Board Prior Art Priority Date Cutoff

PTAB Rejects End-Around the IPR Printed Publication Requirement

Post Grant Review provides a breath of fresh air to Patent Office patentability challenge procedures by allowing prior sales and prior uses as eligible prior art. But, of course, PGR is only available for post-AIA patents and...more

11/14/2014 - America Invents Act Inter Partes Review Proceedings Patents Post-Grant Review Prior Art

A Successful Motion for Additional Discovery in an Inter Partes Review

Countless parties to inter partes review can tell you how to lose a Motion for Additional Discovery. This is especially so for discovery motions seeking evidence to prove privity between the Petitioner and a third party in an...more

11/13/2014 - Discovery Indemnification Inter Partes Review Proceedings Patents

PTAB Clarifies its Stances on § 315 on the Way to the Federal Circuit

In an apparent attempt to better explain itself prior to Federal Circuit appeal, the PTAB reiterated and further clarified its decision in Ariosa Diagnostics v. Isis Innovations, IPR2012-00022 regarding three sections of 35...more

11/12/2014 - Inter Partes Review Proceedings Patent Litigation Patent Trial and Appeal Board Patents

PTAB Grants Rare IPR “Motion to Compel”

Many parties to inter partes review proceedings continue to have their guns pointed directly at their feet, taking erroneous actions that are consistently called out by the PTAB. In the midst of one such error, we explore the...more

11/11/2014 - Declaration Inter Partes Review Proceedings Motion to Compel Patent Trial and Appeal Board Patents Work Product Privilege

Paragraph IV Certification Does Not Constitute “Civil Action” That Bars IPR

Momentum is growing in the filing of inter partes petitions by drug companies seeking to invalidated Orange Book patents. We will be keeping a close eye on some of the issues that are unique to these pharmaceutical IPR...more

11/10/2014 - Inter Partes Review Proceedings Novartis Patent Infringement Patent Litigation Patents

Conclusory Arguments Plus Citation to KSR Insufficient to Institute IPR

The Board has instructed, time and again, that a Petition for Inter Partes Review must tell a story. Mere conclusory attorney argument, or conclusory statements from an expert, are not sufficient to carry the burden of...more

11/6/2014 - Inter Partes Review Proceedings Patent Trial and Appeal Board Patents

Ornamental Feature of Claim Given No Patentable Weight by PTAB in Obviousness Analysis

Not all claim limitations are treated equally. In Crocs, Inc. v. Polliwalks, Inc., IPR2014-00424, involving US Pat. No. 8,613,148, the Board addressed an argument for patentability based on an ornamental feature found in the...more

11/5/2014 - Claim Construction Crocs Inc Obviousness Patent Litigation Patents

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