Michael K. Mutter
Suite 100 East
8110 Gatehouse Road
Falls Church, VA 22042
Michael K. Mutter leads the firm’s Electronics and IT Patent Department, where he focuses on licensing, litigation, dispute resolution, client counseling and portfolio management. His broad IP experience gives him an advantage in all aspects of domestic and international patent prosecution, while his deep understanding of specialized technologies enables him to successfully defend his clients’ IP rights. Mr. Mutter has been lead counsel in recent inter partes proceedings, as well as Federal District Court litigation and proceedings at the Federal Circuit of Appeals. He also filed the first public-use-proceeding case at the USPTO and appeals to the Federal Circuit Court.
Early in his legal career, he served as in-house counsel for several tech start-ups where his work helped to shape the current state of the law in the protection and monetization of IP in multimedia technology. He has vetted the IP property rights and transfer for various mergers and acquisitions. Mr. Mutter has over 30 years’ of experience in licensing technology. Highlights include:
- Authored a multinational patent licensing agreement for a major patent licensing authority and has regularly participated in major patent pool licensor meetings.
- Negotiated the sale of a large patent portfolio between Global 500 companies.
- Orchestrated field of use licensing strategy to optimize licensing of fundamental technology.
- Negotiated numerous company to company and university to company licenses.
Mr. Mutter takes a bold, creative approach representing his clients blending his command of relevant technologies with his sophisticated grasp of substantive IP law and the complex mechanics of the USPTO. He is a frequent lecturer in the United States and abroad on the IP protection of electronics and information technology.
Articles & Presentations
- Exposure to Enhanced Damages After Halo, World Intellectual Property Review, January/February 2017
- Halo: A Fresh Approach to Enhanced Damages, World Intellectual Property Review, November/December 2016
- Halo Returns Law of Enhanced Damages to Pre-Seagate Standard, June 2016
- Quanta Exhaustion and its Effect on Licensing, World Intellectual Property Review, March/April 2012
- America Invents Act H.R. 1249, Presented October 2011
- Patenting Software, Electronic and Network Computing – Obtaining Patents that will Support Determination of Infringement, Presented October 2011
Speaking Engagements & Recognitions
- Webinar: The Halo Effect: Walking the Willfulness Tightrope, May 16, 2017
- Recognized by Legal 500 U.S. 2015 and 2016
- Named an IP Star by Managing IP for 2013, 2014, 2015 and 2016
- Speaking Engagement of AIPPI, Turkey, 2014
- Quoted in IP Watch article on the case of Alice Corp.. v. CLS
- Faculty Member Institute of IP Research & Development, India, 2011
- Speaking Engagement: AIPLA Mid-Winter Institute, California, 2010