Matthew Cutler

Matthew Cutler

Harness, Dickey & Pierce, PLC

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Happy 2nd Birthday, Inter Partes Review – By the Numbers

Welcome to Volume 7 of our IPR-PGR Quarterly Report. We take special note of three interesting statistics this quarter. First, obtaining amended patent claims in these proceedings remains difficult. ...more

9/26/2014 - Inter Partes Review Proceedings Patents

Provisional Application Not § 102(e) Prior Art in IPR

The PTAB taught a Petitioner a valuable lesson regarding the scope of 35 U.S.C. § 102(e) in Sequenom Inc. v. Stanford Univ., IPR2014-00337, finding that a provisional patent application cannot be used as prior art in an inter...more

9/22/2014 - Inter Partes Review Proceedings Patent Infringement Patent Litigation Patents

Despite Lack of Familiarity with Specific Technology-at-Issue, Industry Expert Not Excluded

The Board continued its reluctance to exclude evidence in inter partes review proceedings in Primera Technology, Inc., v. Automatic Manufacturing Systems, Inc., Final Written Decision, IPR2013-00196 by denying a motion to...more

9/10/2014 - Expert Testimony Inter Partes Review Proceedings Patent Trial and Appeal Board Patents

Another Requirement to a Successful Motion to Amend Claims

It is getting hard to keep track of all the hoops and hurdles that need to be navigated in bringing a successful motion to amend in an inter partes review proceeding. Each new decision seemingly raises the bar further. The...more

9/8/2014 - Disclosure Requirements Inter Partes Review Proceedings Motion to Amend Patent Applications Patents Toyota

Late Addition of a Real-Party-in-Interest Allowed in Inter Partes Review

What if you come up short in naming all of the real-parties-in-interest to an inter partes review proceeding? Will the Board allow you to amend your petition? Four related IPR proceedings required the Board to address this...more

9/5/2014 - Inter Partes Review Proceedings Patent Litigation Patent Trial and Appeal Board Patents Real Party in Interest

Second Petition Seeking Post Grant Review is Filed

Finally, the “PGR” portion of this site is starting to gain some momentum as Accord Healthcare brought the second ever Post Grant Review Petition. Accord Healthcare, Inc. v. Helsinn Healthcare S.A., et al., IPR2014-00010. ...more

9/4/2014 - Patent Infringement Patent Litigation Patents Post-Grant Review

Corroborating Evidence Insufficient in Final Written Decision Canceling All Claims

One of the more fact-dependent inquiries in patent disputes is the issue of conception and reduction to practice. This issue was raised in an inter partes review setting in CBS Interactive Inc. v. Helferich Patent Licensing,...more

9/2/2014 - CBS Patent Infringement Patent Litigation Patents Prior Art

Conclusory Declaration Testimony Again Leads to Unsuccessful IPR Petition

Some of the best inter partes review lessons can be learned from decisions denying institution of an inter partes review trial. Among the chief grounds for denying petitions, failure to provide competent expert testimony in...more

8/29/2014 - Expert Testimony Inter Partes Review Proceedings Patent Trial and Appeal Board Patents

More Fun with the One-Year Time Bar of § 315(b)

The nuances of the time bar of 35 U.S.C. § 315(b) continue to be explored in various IPR decisions. In Amneal Pharmaceuticals, LLC v. Endor Pharmaceuticals Inc., IPR2014-00360, Paper 15, Patent Owner asserted that the...more

8/28/2014 - Inter Partes Review Proceedings Patent Infringement Patent Litigation Patents

§ 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

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