Matthew Cutler

Matthew Cutler

Harness, Dickey & Pierce, PLC

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First One Gets Away from Bass-Backed Group

Many in the pharmaceutical industry have been concerned about becoming a target of the Coalition for Affordable Drugs, the group backed by hedge fund manager Kyle Bass. But yesterday the first target of Bass’s strategy,...more

8/27/2015 - Hedge Funds Inter Partes Review Proceedings Orange Book Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents Pharmaceutical Patents Prior Art

Board Dismisses Petition for Failure to Name All Real Parties-In-Interest

Patent Owners get frustrated when they believe a petition fails to identify all real parties-in-interest. This is understandable, given the difficulties in obtaining additional discovery on the issue. However, sometimes...more

8/25/2015 - Additional Discovery Inter Partes Review Proceedings Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents Real Party in Interest

PTAB Generously Expands Page Limits in Patent Owner Response

The Board has earned a reputation for rigidly following the procedural rules for IPR proceedings, for good reason. Early on, the Board was likely concerned that an ad hoc web of decisions that granted relief from the variety...more

8/24/2015 - Due Diligence Inter Partes Review Proceedings Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents Prior Art

USPTO Announces Second Set of IPR Changes

On August 19, 2015, USPTO Director, Michelle Lee, explained the anticipated, second set of proposed changes to be made to IPR proceedings as inter partes review approaches its 3rd birthday. The first set of changes was...more

8/20/2015 - Additional Discovery Broadest Reasonable Interpretation Standard Claim Construction Comment Period Inter Partes Review Proceedings Motion to Amend Patent Trial and Appeal Board Prior Art Proposed Regulation Real Party in Interest USPTO

PTAB Addresses Means-Plus-Function Claim in a Post-Williamson World

Like every en banc Federal Circuit decision, the Court’s decision in Williamson v. Citrix Online, LLC, No. 2013-1130 (Fed. Cir. June 16, 2015) (en banc) made big headlines. It is, therefore, worth reviewing one of the first...more

8/20/2015 - Claim Construction Inter Partes Review Proceedings Means-Plus-Function Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents

PTAB Addresses Antecedent Basis Issues in IPR

Claims that have terms lacking antecedent basis can present an opportunity for defendants in litigation, including creating a potential invalidity defense under 35 USC §112. It is interesting, therefore, to review the Board’s...more

8/18/2015 - Indefiniteness Inter Partes Review Proceedings Patent Infringement Patent Invalidity Patent Litigation Patent Trial and Appeal Board Patents Scope of the Claim

PTAB Denies Challenged Grounds as Redundant in View of Grounds in Different Petition

The Board has a well-established reputation for denying grounds in a petition that are deemed redundant to other instituted grounds. In view of that reputation, Petitioners are adapting, seeking to file multiple petitions,...more

8/13/2015 - Inter Partes Review Proceedings Obviousness Patent Litigation Patent Trial and Appeal Board Patents Redundancy Dismissals

Harnessing Patent Office Litigation: A Look at Thirty Three Months of Inter Partes Review Proceedings Before the United States...

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

8/5/2015 - Inter Partes Review Proceedings Motion to Amend Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents USPTO

Joinder Provisions of IPR Continue to Save Co-Defendants in Litigation

The joinder provisions of inter partes review proceedings were instituted as a direct response to the ability of parties to settle proceedings before a final written decision is instituted. Via the joinder rules, a second...more

8/4/2015 - Inter Partes Review Proceedings Joinder Patent Infringement Patent Litigation Patents

Endo Pharma Patent Survives IPR Trial

Amneal Pharmaceuticals came up short in its bid to knock out numerous claims of Endo Pharmaceuticals’ US Patent No. 8,329,216 in a Final Written Decision issued on July 22, 2015, Amneal Pharm., LLC v. Endo Pharm. Inc.,...more

7/23/2015 - Inherency Inter Partes Review Proceedings Obviousness Patent Invalidity Patent Litigation Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents Prior Art

PTAB Highlights Motion to Amend Decision

Another day, another key decision from the PTAB. This time, the Board has highlighted a Motion to Amend opinion entered in MasterImage 3D, Inc. v. RealD, Inc., IPR2015-00040, decided by six Administrative Patent...more

7/22/2015 - Motion to Amend Patent Prosecution Patent Trial and Appeal Board Patents Prior Art

PTAB Decision Illustrates Advantage of Defining Terms in Specification

Given the difficulty Patent Owners are having in surviving IPR proceedings, the discussion often turns to ways in which patents can be drafted to help survive an IPR Petition. In this regard, the recent decision in Aker...more

6/4/2015 - Claim Construction Inter Partes Review Proceedings Patent Applications Patent Trial and Appeal Board Patents

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

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