Joseph E. Mutschelknaus is a director in Sterne Kessler’s Electronics Practice Group where he prosecutes post-issuance proceedings and patent applications before the United States Patent & Trademark Office. He also assists with district court litigation and licensing issues.
Joe has extensive experience before the Patent Trial and Appeal Board (PTAB), challenging and defending already-issued patents. In particular, he handles post-grant review, inter partes review, and covered business method review proceedings under the America Invents Act, representing both petitioners and patent owners. In addition, he has handled reexamination proceedings, winning several high-stakes appeals before the PTAB. To win these cases, Joe brings his ability to clearly explain the relevant technology in a way that is most favorable to his clients.
Also, Joe has prepared and prosecuted hundreds of patent applications. His approach to patent application drafting is technology-focused, working with inventors to identify specific metes-and-bounds of the subject matter sought to be patented. This approach draws from his experience litigating patentability before the PTAB, where ambiguity in a patent's scope is often held against the patentee.
During prosecution, Joe has particular expertise using new expedited procedures, such as the Patent Prosecution Highway and the USPTO’s Track I program. With these procedures, he has helped both small start-ups and large multinational companies build large, multifaceted patent portfolios quickly that can be licensed or enforced internationally. In developing a patent prosecution strategy, Joe believes in focusing efforts efficiently to maximize return on investment.
Joe regularly writes and publishes on cutting-edge patent law issues. For example, he published a scholarly note on the scope and applicability of implied patent licenses to open source software products (19 Fed. Cir. B.J. 409). Additionally, he is also a contributing author of Patent Office Litigation, Second Edition, published in 2017 by Thomson Reuters Westlaw. The book provides a fresh and comprehensive exploration of patent office litigation proceedings, including how the proceedings interact with other aspects of patent procurement and enforcement, while delivering practical analysis and advice. He is also an adjunct professor at the George Mason University Antonin Scalia Law School.
Joe’s areas of technical expertise include object oriented software design, web technologies, data security, graphics, imagery, panoramic photography, geographic information systems, networks, and Internet engineering. Prior to joining Sterne Kessler, he worked in industry, providing software engineering and consulting services.
Joe received his J.D. from The George Washington University Law School, with honors. He earned his B.S. in computer engineering from the University of Virginia, with distinction.
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