Matthew L. Cutler ( Matt )

• Lead counsel in the Proxyconn v. Microsoft case, which marked the first time the Federal Circuit reversed a PTAB Final Written Decision in an IPR
• Lead district court counsel in the Octane Fitness v. Icon Health & Fitness case, developing the factual record that ultimately led the Supreme Court to change the standard for the award of fees in a patent case and an ultimate award of fees by the district court for our client
• Secured a favorable settlement on behalf of a client that led to the dismissal of a lawsuit and four co-pending IPRs. The lawsuit involved sixteen patents related to field programmable gate arrays (FPGA) used in high-speed processing of financial market data.
• Jury verdict of “willful” utility patent infringement, “willful” copyright infringement and an award of attorney fees
• Jury verdict of trade secret misappropriation and an award of attorney fees
• Jury verdict of design patent infringement
• Seven figure settlement for the client-defendant in a utility patent infringement action
• Numerous settlements after Markman hearings, dispositive motions or other case developments that were significant successes for our clients
• Experience in resolving international intellectual property disputes, including in China, Korea, Taiwan, Europe and Japan
• Obtained arbitrator ruling on behalf of client-plaintiff that included seven-figure damages award, above industry average royalty moving forward, and attorney fees
• Convinced the plaintiff in a trademark infringement lawsuit to settle contingent upon payment of client-defendant’s attorney fees
• Defense verdict in false advertising case

In the News

• Four Harness IP Lawyers Named to 2023 Missouri and Kansas Super Lawyers Lists
• Patent Litigator Matt Cutler talks to Law360 about the Decisions that Reshaped Patent Law
• Patent Litigator Matt Cutler Talks to Bloomberg Law about Prior Art Burden for Applicants
• IPR Expert Matt Cutler Discusses Supreme Court SAS Decision, World IP Review, April 25, 2018
• Matt Cutler Discusses IPRs, Patent Owner Estoppel in Arthrex v. Smith & Nephew
• Law360 Talks to Matt Cutler About New PTAB Amendment Guidance
• Matt Cutler Quoted in Patent Investor Article on Aqua Products Call
• Matt Cutler Discusses Future of Patent Trial and Appeal Board with Law360
• Patent Litigator Matt Cutler Discusses the PTAB's Fifth Anniversary with Law360
• "SCOTUS Bolsters Patent Exhaustion, This Time in Indelible Ink," The Recorder, May 30, 2017
• "AIA Petitions On Record Pace In 2017," Law360, May 2, 2017
• "Facebook Loses PTAB Challenges To Content Management IP," Law360, April 5, 2017
• "Time is Right for Tackling Blocking Patents," The Recorder, July 1, 2016
• "Fed. Circ. Affirms PTAB's Invalidation Of Graphite Patents," Law360, June 17, 2016
• "4 Things To Know About PGRs After 1st-Ever Final Decisions," Law360, June 15, 2016
• "Federal judge says patent board didn't adequately explain reasoning in decision," Legal Newsline, February 16, 2016
• "Q&A with Matt Cutler on the Protecting American Talent and Entrepreneurship Act," Patent Baristas, May 27, 2015
• "Fed. Circ. Could Weaken Patent Rights In Exhaustion Case," Law360, April 21, 2015
• "Innovate or Else: Kyle Bass Strikes Again and Challenges Shire Patents," Wall Street Journal - Pharmalot, April 2, 2015
• "PTAB Says Laird Technologies Did Not Infringe GrafTech Patents," Law360, March 26, 2015
• "Young, Disabled, Combat Veterans Are Grateful For St. Louis Supporters," St. Louis Public Radio, November 10, 2014

Events

• Matt Cutler to Discuss "Launching a Post-Grant Proceeding" in IPO Webinar
• 54th Annual Conference on Intellectual Property Law in Plano, Texas
• PTAB 2nd Annual Bench and Bar Conference

Articles

• "Don’t Get Cheesed – Protect Your Video Game’s Intellectual Property" – Harness IP’s Matt Cutler in Licensing Journal
• Matt Cutler Pens Article for Pharmaceutical Executive on Patent Litigation Trends Positively Impacting Pharma Patent Rights
• Harness IP Attorneys Share Strategies to Avoid IP Lawsuits in Business Journal Article
• "10 Years Of KSR: 4 Key Statistical Takeaways," Law360, May 4, 2017
• "Branded Pharma Feels the Pinch from the Inter Partes Review Monster It Helped Create," Pharmaceutical Processing, August 23, 2016
• "5 Things You Should Know About the PTAB’s New Rules Governing Post Grant Administrative Trials," IP Watchdog, April 18, 2016
• "3 Years Of IPR: A Look At The Stats," Law360, October 9, 2015
• "6 Reasons Inter Partes Review Was Popular In 2013," Law360, December 17, 2013
• "GAO report: looking for the real troll," Intellectual Property Magazine, November 2013
• "What We've Learned From 9 Months Of Inter Partes Reviews," Law360, July 9, 2013
• "Why Inter Partes And Post-Grant Review Are Game-Changers," Law360, January 8, 2013
• "IP Litigation And Portfolio Management Tips," The St. Louis Bar Journal, January 17, 2012

Blogs

• Don’t Disclaim-Away the Broader Claims in Your Continuation Patent Application
• “Trademark tactics for safeguarding gaming assets,” The Trademark Lawyer
• Don’t Get Cheesed – Protect Your Video Game’s Intellectual Property
• Intellectual Property in the Metaverse and the Challenges of Regulating a Lawless Frontier
• Rowing Machine Design Patent Infringement Battle Kicks Off in Delaware
• Racing Equipment Competitors Square off in the Eastern District of Missouri
• What the Ethereum Name Service is and Why it May Be Important to Act Now
• Peloton Motion to Dismiss Icon Health & Fitness Counterclaims Granted-in-part, and Denied-in-Part
• Peloton Hit with Patent Litigation Over Streaming Video Technology
• Contingent Fee and Other Alternative Fee Arrangements for Patent Litigation
• USPTO Considers Replacing Broadest Reasonable Interpretation Standard in IPRs & PGRs
• Partial Institution Decisions Go, as IPR Proceedings in General are Here to Stay
• IPRs Are Here to Stay, But Partial Institution Decisions Are a Thing of the Past
• Disclaimer in IPR Raises Patent Owner Estoppel
• Wi-Fi One: PTAB’s Time-Bar Determinations are Reviewable; Achates Overruled
• PTAB Provides Guidance on Motions to Amend
• PTAB Issues Precedential Opinion Regarding “Follow-On” Petitions
• The Demise of Rule 36 Judgments in Federal Circuit Decisions Relating to IPRs
• Aqua Products: Amendments in IPR Proceedings Come Roaring to the Forefront
• Federal Circuit Signals that Issue Joinder and Expanded Panels May Not Be Long for the IPR World
• Federal Circuit is No Place to Make New Claim Construction Arguments
• Federal Circuit to Reconsider Achates Decision en banc
• IPR Estoppel Narrowed Even Further in D. Delaware Ruling
• Unreasonable Claim Construction Causes PTAB Reversal
• Federal Circuit Weighs in on Evidentiary Challenge in IPR, Reversing PTAB
• 45 Months of Inter Partes Review – By the Numbers
• First PGR Final Written Decisions – Look a Lot Like IPR/CBM Decisions
• PTAB Designates Five Decisions as Precedential
• Federal Circuit Maintains “Substantial Evidence” Standard of Review in AIA Post Grant Proceedings
• Supreme Court Hears Arguments in Cuozzo Case
• PTO Issues Final Rule Changes to IPR Proceedings
• Federal Circuit Reverses Because PTAB Relied Upon Argument First Raised at Oral Argument
• 39 Months of Inter Partes Review – By the Numbers
• Harness IP Quarterly BioPharma Report
• Federal Circuit Issues Ironic Decision Reversing PTAB For Not Providing Enough Analysis
• PTAB Rejects Challenge to Onglyza® Patent
• Sec. 103(c) Saves Patent Claims in IPR Final Written Decision
• Federal Circuit Weighs in on IPR Again, and Judge Newman Regains Her Footing as Pro-Patent Crusader
• PTAB Finds Different Claim Terms Have the Same Meaning
• Federal Circuit Issues Second Reversal in Favor of a Patent Owner
• 3 Years of Inter Partes Review – By The Numbers
• Board Offers New Technique to Solve an Often-Raised IPR Issue
• Lessons Learned from a Rare CAFC Opinion on an IPR Matter
• Federal Circuit Clarity on Key IPR Issues May Be on the Way
• Split 5-Judge Panel Allows Issue Joinder as a Way Around the One-Year Filing Deadline
• PTAB Eases Restrictions on Submitting Observations on Cross Examination for Your Own Witness
• PGR Order Offers Insight Into Successful and Unsuccessful Discovery Requests
• Don’t Count on Avoiding a Redundancy Finding by Filing Multiple IPR Petitions
• PTAB Finds Copyright Notice is Inadmissible Hearsay – Denies Petition for IPR
• First One Gets Away from Bass-Backed Group
• Board Dismisses Petition for Failure Name All Real Parties-In-Interest
• PTAB Generously Expands Page Limits in Patent Owner Response
• USPTO Announces Second Set of IPR Changes
• PTAB Addresses Means-Plus-Function Claim in a Post-Williamson World
• PTAB Addresses Antecedent Basis Issues in IPR
• PTAB Denies Challenged Grounds as Redundant in View of Grounds in Different Petition
• 33 Months of IPR: By the Numbers
• Joinder Provisions of IPR Continue to Save Co-Defendants in Litigation
• Endo Pharma Patent Survives IPR Trial
• PTAB Highlights Motion to Amend Decision
• PTAB Designates New “Informative Opinion”
• Motion for Additional Discovery Seeking Details of Kyle Bass-led Coalition Partially Succeeds
• Board Has Change of Heart On Rehearing
• Board Disqualifies Reference As Not Meeting Requirements of 102(e)
• Lessons From the Rare Grant of an IPR Motion to Amend
• Board Rejects Attempt to Add Testimony to Preliminary Response
• PTAB vs. Federal Circuit Update
• Federal Circuit Reverses PTAB on IPR Decision For First Time
• Objective Basis for Inherency Argument Must Be Contained in IPR Petition
• Amendments to PATENT Act Proposal Takes Aim at IPR Proceedings
• Board Denies Petition For Failure to Identify All Real Parties-In-Interest
• Sloppy Submissions By Patent Owner Earn PTAB Sanctions
• PTAB Finalizes “Quick Fix” Changes to IPR/PGR Procedure
• Doctrine of Inurement Does Not Save Design Patent in IPR Proceeding
• PTAB Issues Subpoenas in Two IPR Proceedings
• Board Clarifies When Expanded Panel Can Consider an IPR Issue
• Strategies for Pharma Companies Facing Bass-Like Challenges in IPR Proceedings
• 30 Months of IPR Practice – By the Numbers
• Live Testimony for Fact Witness Can Be Appropriate at IPR Oral Hearing
• Toward a Bullet-Proof Petition – Motivation to Combine
• Which Party Should File Motion to Seal in Inter Partes Review?
• Pharmaceutical Filings on the Upswing as Power of IPR Becomes More Well-Known
• IPR Incorporation by Reference Argument Not Enough to Save Priority Claim
• Another IPR Victory for Harness IP – Defeat All Challenged Claims of 3 Patents
• PTO Previews Changes to Inter Partes Review Practice
• Board Discusses Difference Between Supplemental Evidence and Information
• PTAB Rules Lab Notebooks Insufficient to Prove Conception and Reduction to Practice
• PTAB Rejects Two Attempts by Patent Owners to Antedate Prior Art
• PTAB Declines to Limit Claim Based on Disclosure of Only One Embodiment
• Teaching Away Arguments Fail to Gain Traction with PTAB
• Board Disallows Later IPR Petition Directed at Previously-Challenged Patent
• Motion to Exclude is Proper Vehicle in IPR to Remove Reference as Evidence
• Another IPR Petition Comes Up Short for Failing to Adequately Show Rationale to Combine
• Legislative Update – STRONG Patents Act Takes Aim at IPR and PGR
• 27 Months of Inter Partes Review – By the Numbers
• Unavailability of IPR Witness for Deposition Undercuts Testimony
• PTAB Will Not Review Contract Issues Even if They Relate to Standing
• IPR Motions for Joinder are Common, But Not Automatic
• Rationale from Denied Ground Used By PTAB In Final Written Decision
• IPR Obviousness Challenge of Design Patent Denied
• IPR Patent Owner Succeeds in Antedating Key Prior Art
• Pyrrhic Victory: IPR Petition Denied Because Claims Indefinite
• Inter Partes Review – A Fair and Efficient Litigation Alternative
• Third IPR Petition Directed to Same Patent Denied under 35 U.S.C. § 325(d)
• Patent Public Advisory Committee 2014 Annual Report
• Proving Real-Party-In-Interest in IPR Remains Elusive
• IPR Petition Time-Barred Even Where First Lawsuit “Dismissed” and Folded Into Later Lawsuit
• PTAB Orders Halt to “Speaking” Objections in Deposition
• PTAB Reiterates Prohibition Against New Arguments at IPR Oral Hearing
• Copyright Notice on Prior Art Establishes Priority Date in IPR
• IPR Petition Time-Barred Even Where First Lawsuit “Dismissed” and Folded Into Later Lawsuit
• PTAB Rejects End-Around the IPR Printed Publication Requirement
• A Successful Motion for Additional Discovery in an Inter Partes Review
• PTAB Clarifies its Stances on § 315 on the Way to the Federal Circuit
• PTAB Grants Rare IPR “Motion to Compel”
• Paragraph IV Certification Does Not Constitute “Civil Action” That Bars IPR
• Motion for Observation of One’s Own Witness Not Allowed in IPR
• Conclusory Arguments Plus Citation to KSR Insufficient to Institute IPR
• Ornamental Feature of Claim Given No Patentable Weight by PTAB in Obviousness Analysis
• PTAB Discusses Nexus in Secondary Considerations Argument
• Quick Look at a Granted Motion for Additional Discovery in IPR
• Board Denies IPR Challenge Based on Insufficient Chemical Range Overlap
• IPR Joinder, While Common, is Not a Matter of Right
• PTAB Addresses Issue of Whether IPR Prior Art is Enabling
• Dissents and Concurrences Popping up in IPR Proceedings
• Rare Grant (in Part) of an IPR Motion to Exclude
• An Overdue Discussion of the PTABs Grant of the First IPR Motion to Amend
• PTAB Shows a Willingness to Intervene in Deposition Disputes
• Later Priority Date for IPR-Challenged Patent Where No Written Description in Parent
• PTAB Disqualifies Art as Being Non-Analogous to Claimed Invention
• Infringement Contentions From Copending Litigation Not Allowed as Supplemental IPR Information
• PTAB Offers Guidance Regarding Discovery in Inter Partes Reviews
• PTAB Getting Tough on Petitions Seeking to Circumvent Page Limit
• Board Considers Proof of Diligent Reduction to Practice
• Happy 2nd Birthday, Inter Partes Review – By the Numbers
• Board Grants Rare Motion to Submit Supplemental Information
• First Petition for Post Grant Review Filed
• Patent Expiry During IPR Means Phillips, not BRI, Applies
• Board Allows Rare Motion for Additional Discovery
• PTAB Grants Rare Motion for Reconsideration
• Twenty-One Months of Inter Partes Review – By the Numbers
• Board Addresses Procedure for Making Board Aware of Supplemental Evidence
• Sur-Reply Authorized By Board in Response to New Expert Testimony in Petitioner Reply by Patent Owner
• Declaratory Testimony from File History is “Affidavit Testimony” Which Requires Deposition
• Expert Declaration Not Allowed as Supplemental Information Related to Claim Constructions
• Claim Term of Expired Patent Given non-BRI Construction
• 18 Months of IPR – By the Numbers
• Harness IP Successfully Defends Another Patent in Inter Partes Review
• Four More IPR Final Written Decisions Go Against Patent Owners
• Trio of Final Written Decisions Go Against Patent Owner
• Communications Between Experts Discoverable in Inter Partes Review
• Joinder in Inter Partes Review Proceedings Takes Shape
• Another Motion to Amend Denied in IPR Final Written Decision
• First Claims Survive Inter Partes Review Proceedings
• Motorola Mobility Takes Down Another Patent Via Inter Partes Review
• Quartet of Final Inter Partes Review Decisions Go Against Patent Owner
• Dell Ends Up With a Mixed Bag of Results in 2 IPR Petitions Filed Against Acceleron
• Board Will Not Fill In Evidentiary Gaps in Inter Partes Review Petition
• Fifteen Months of Inter Partes Review…By the Numbers
• Second Inter Partes Review Final Written Decision – Second Patent Goes Down
• Incorporation by Reference Not Allowed in Inter Partes Review
• IPR Petition Must Be Filed Within One Year of First Infringement Complaint Filed by Patent Owner
• Inherency Argument Comes Up Short in Inter Partes Review Petition
• Preliminary Response that Addresses the Merits of Petition Again Fails in Grant of IPR Trials
• Communications Between Experts not “Routine” Discovery in Inter Partes Review Proceedings
• 6 Reasons Inter Partes Review Was Popular in 2013
• Hindsight and Teaching Away Arguments Fall Short in Decision to Initiate IPR Trial
• Board Adopts Claim Construction that is Even Broader than that Proposed by Petitioner
• Board Agrees that Petition Failed to Set Forth Relevant Claim Construction, But Finds Error Harmless
• Attorney Argument in Preliminary Response Continues to be Trumped by Expert Evidence from Petition
• Burden is on Petitioner to Prove Priority Date of Patent Challenged in Inter Partes Review
• Dismissal of District Court Case, Without Prejudice, Removes Time Bar of 35 USC § 315(b)
• Board Gives No Weight to Previous Examiner and District Court Decisions that Prior Art Was Antedated
• Rehearing? PTAB Mostly Says “We Heard You Well Enough the First Time…” – Part II
• Rehearing? PTAB Mostly Says “We Heard You Well Enough the First Time…” – Part I
• PTAB Claim Construction Ruling Wipes out Half of Challenged Grounds, But Trial Still Initiated
• Copyright Notice without Day and Month Insufficient to Establish Reference as Prior Art
• To Be a Real Party-In-Interest, One Must Control Actions of a Party to an Inter Partes Review
• Board Eschews Federal Circuit Claim Construction in Granting IPR Trial Requested by Google
• Petitioners Strike First: PTAB Issues First Final Decision – Claims Unpatentable and Motion to Amend Denied
• Operability of Combined References Considered by PTAB in Obviousness Analysis
• GAO Report: Looking for the Real Troll
• PTAB Clarifies Procedure for Filing Supplemental Evidence in Response to Objections
• Entry of Supplemental Evidence a Tough Hurdle to Navigate in IPR Proceedings
• PTAB = Stickler on Detailed Inter Partes Review Rules
• Deposition Parameters Start to Take Shape in Inter Partes Review Proceedings
• Shoe Wars Reach PTAB as Inter Partes Review Brought by Adidas is Granted Against Nike Patent
• Priority Date of Challenged Patent Sustained by Board, But IPR Trial Still Instituted on Other Grounds
• Board Gives No Deference to District Court Litigation Claim Construction in Denying IPR Petition
• PTAB’s Detailed Claim Construction Analyses Exemplified in Grant of Three IPR Petitions
• Short-Shrift Analysis of Dependent Claims Costs Patent Challenger in Inter Partes Review Institution
• Board’s Broad Reading of Claim Term Results in Institution of IPR Trial
• Expert Opinion on Claim Construction Must Include Evidence to be Given Weight by PTAB
• Overwhelming Prior Art Makes Board’s Job Easy in Grant of IPR Trial
• 1 Year of Inter Partes Review…By the Numbers
• Board’s Claim Construction Limited to What it Needed To Initiate IPR Trial
• Detailed Means-Plus-Function Analysis Underlies Board’s Decision to Institute Six Related IPR Trials
• Testing that Proved Inherent Properties of Prior Art Accepted by Board
• Obtaining Additional Discovery in an Inter Partes Review Remains Difficult
• Federal Circuit Clarifies Fraud Standard in Trademark Cases
• Litigation Avoidance Strategy No. 1: Better Patent Claims = Less Litigation

Matt knows first-hand what it takes to prevail in an intellectual property dispute. A proven litigator, he is committed to delivering comprehensive advocacy in all areas of intellectual property defense and prosecution. A certified mediator, Matt’s negotiation skills are developed and effective. His capabilities include state and federal claims pertaining to complex patent, trademark and copyright litigation, as well as the misappropriation of trade secrets. Matt is also known for his extensive experience pertaining to freedom-to-operate opinions for both infringement and validity analyses.

Matt’s clients include some of the most innovative businesses of today, and range from start-ups, to emerging companies, to multi-national corporations with global IP assets. Matt is valued for his objectivity and innate ability to leverage his client’s position. Although Matt offers an impressive track record of undeniable results both in and out of court — he is practical — and evaluates each matter from both a legal and economic perspective.

Awards & Distinctions

• Chambers USA: America’s Leading Lawyers in Business for Intellectual Property, Missouri, 2019-2023
• Best Lawyers, Litigation – Intellectual Property “Lawyer of the Year” in St. Louis, 2020
• Best Lawyers, Patent Law “Lawyer of the Year” in St. Louis, 2019
• Best Lawyers, Litigation – Patent “Lawyer of the Year” in St. Louis, 2017
• Best Lawyers, Litigation – Patent, 2015-2024
• Best Lawyers, Litigation – Intellectual Property, 2013-2024
• Best Lawyers, Patent Law, 2012-2024
• Managing Intellectual Property, “IP Stars,” 2014-2022
• Intellectual Asset Management (IAM), “Patent 1000,” 2021-2023
• JD Supra, Reader’s Choice Award, 2017
• Ingram’s Magazine, “50 Missourians You Should Know,” 2017
• St. Louis Small Business Monthly, “Best IP Attorney,” 2021, 2023
• St. Louis Small Business Monthly, “100 St. Louisans to Know to Succeed in Business,” 2017
• Missouri Super Lawyers, 2013-2021
• Missouri Super Lawyers, “Rising Star,” Intellectual Property Litigation, 2010
• Missouri Lawyers Weekly, “Up & Coming Lawyer,” 2009
• Notre Dame Club of St. Louis, “Member of the Year,” 2008

Memberships

• Bar Association of Metropolitan St. Louis
• Eastern District of Missouri, Patent Rules Committee
• American Intellectual Property Law Association 

Civic & Charitable

Matt is the Co-founder and President of the Joshua Chamberlain Society, a charity that supports seriously injured or fallen military veterans and their families. Learn more at www.chamberlainsociety.org.