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.

Speaking Engagements

    Current Speaking Engagements

    Previous Speaking Engagements

  • MaryAnne Armstrong to present at the FICPI Open Forum

    MaryAnne Armstrong to present at the FICPI Open Forum.

    November 05 2020
  • FICPI Virtual Open Forum

    FICPI Virtual Open Forum

    November 04 2020
  • BSKB is a sponsor of the 2020 AIPLA Virtual Annual Meeting

    2020 AIPLA Virtual Annual Meeting

    October 22 2020
  • BSKB to present at FICPI’s “Connect, Share & Grow” series

    FICPI’s “Connect, Share & Grow” Webinar Series.

    September 30 2020

Articles

  • February 20, 2017

    Exposure to Enhanced Damages After Halo

    by Michael K. Mutter and Shawn A. Hamidinia, Ph.D. | World Intellectual Property Review

    The Halo decision on wilful patent infringement has made it desirable to accumulate evidence of good faith at the time of conduct in order to avoid enhanced damages.

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  • November 29, 2016

    Halo: A Fresh Approach to Enhanced Damages

    by Michael K. Mutter and Shawn A. Hamidinia, Ph.D. | World Intellectual Property Review

    A US Supreme Court ruling has changed the landscape for determining damages in cases of wilful patent infringement, as explained in the first edition of a two-part article series.

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Presentations