Matthew Cutler

Matthew Cutler

Harness, Dickey & Pierce, PLC

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Rare Grant (in Part) of an IPR Motion to Exclude

Motions to Exclude Evidence have been one of the features of inter partes review practice that have, to date, had a less significant effect than expected. Very few motions have been granted, largely because the Board...more

10/24/2014 - Business Records Evidence Exclusions Expert Testimony Inter Partes Review Proceedings Patent Trial and Appeal Board Patents

An Overdue Discussion of the PTABs Grant of the First IPR Motion to Amend

It is hard to explain how this post, discussing the first ever granted Motion to Amend in an inter partes review, sat in “draft” mode for over 5 months. This is especially perplexing given the difficulty Patent Owners are...more

10/23/2014 - Inter Partes Review Proceedings Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents

PTAB Shows a Willingness to Intervene in Deposition Disputes

Experienced district court litigators are reluctant to “call the judge” when a dispute arises during a deposition. Judges do not want to take the time to deal with mundane discovery disputes and parties do not want to get on...more

10/22/2014 - Depositions Early Dispute Resolution Expert Witness Patent Litigation Patent Trial and Appeal Board Patents Toyota

Later Priority Date for IPR-Challenged Patent Where No Written Description in Parent

The Board denied an interesting attack from Patent Owner who suggested that Petitioner’s argument, that the patent-at-issue was not entitled to the priority date of its parent, was barred in inter partes review proceedings...more

10/21/2014 - Inter Partes Review Proceedings Patent Applications Patent Litigation Patents Written Descriptions

PTAB Disqualifies Art as Being Non-Analogous to Claimed Invention

A limited number of cases, to date, have dealt with the issue of analogous prior art in an obviousness analysis. In Schott Gemtron Corp. v. SSW Holding Co., IPR2014-00358, the Board addressed this type of issue, finding in...more

10/21/2014 - Inter Partes Review Proceedings Obviousness Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents Prior Art

Infringement Contentions From Copending Litigation Not Allowed as Supplemental IPR Information

The circumstances under which the Board will entertain the inclusion of “supplemental evidence” in an inter partes review proceeding remains a moving target. It is worth noting, therefore, the case of Mentor Graphics Corp. v....more

10/20/2014 - Inter Partes Review Proceedings Patent Infringement Patent Litigation Patents

PTAB Offers Guidance Regarding Discovery in Inter Partes Reviews

Still confused about how much discovery you will be able to obtain in an IPR? Fear not, as two of the PTAB’s Administrative Patent Judges have weighed in with a primer on inter partes review discovery. ...more

10/17/2014 - Discovery Inter Partes Review Proceedings Patent Trial and Appeal Board Patents

PTAB Getting Tough on Petitions Seeking to Circumvent Page Limit

Old habits are hard to break. Patent attorneys love to put forth every argument in their arsenal and let the chips fall where they may. Problem is, Congress set up inter partes review procedures to ensure a just, efficient...more

10/16/2014 - Inter Partes Review Proceedings Patent Litigation Patent Trial and Appeal Board Patents

Board Considers Proof of Diligent Reduction to Practice

Patent Owner’s attempt to disqualify prior art in an inter partes review failed because it could not show diligence from conception to reduction to practice in Medtronic, Inc., et al. v. Troy R. Norred, M.D., IPR2014-00395,...more

10/15/2014 - Medtronics Patent Infringement Patent Litigation Patents

Board Disagrees with Claim Construction of Prior Proceeding Before the PTO

One of the more disheartening trends to Patent Owners in inter partes review proceedings is the strong willingness of the PTAB to give little or no deference to prior Patent Office proceedings relative to the patent-at-issue....more

10/14/2014 - Claim Construction Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents USPTO

Patent Office Propaganda?

As you know, we take statistics pretty seriously here at IPR-PGR.com. After our most recent quarterly IPR Report indicated a claim survival rate of 27% (for claims actually put into an IPR trial), we were surprised to learn...more

10/13/2014 - Inter Partes Review Proceedings Patent Litigation Patents USPTO

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

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