US and International Patent and Trademark Prosecution and Portfolio Management; Invention Identification and Patentability Evaluation; Complex Licensing Arrangements and other Transactional Matters; Advanced Patent Prosecution such as Appeals, Inter partes Reviews (IPRs), Reexaminations, and Reissues; Patent Infringement and Validity Studies and Opinions; Design-around Strategies; Due Diligence
Mechanical and Electromechanical Devices; Manufacturing Equipment and Methods; Computer Software; Medical Devices and Methods (including cardiac, vascular, esophageal and skeletal); Engines and Automotive Technologies; Marine Propulsion and Control; LED-based Lighting Products; Heat Management, Particularly for Electronics; Musical Instruments; Sports Equipment; Wireless Communications.
J.D., Brigham Young University – J. Reuben Clark, Jr. Law School, cum laude (1998)
Extern to Hon. Dee V. Benson, Federal District Court Judge, D. Utah
BYU Law Review – Articles Editor
B.S., Mechanical Engineering, Brigham Young University cum laude (1994)
Tau Beta Pi Engineering Honor Society
Golden Key National Honor Society
Glen Nuttall is a seasoned attorney that counsels clients in all aspects of intellectual property law. He helps clients develop and implement strategies that use patents, trademarks and other intellectual property to add value to their company. He also helps clients avoid or overcome the intellectual property of others. In particular, Glen has been successful both in defending patent rights in inter partes review (IPR) proceedings and in challenging patents of third parties. Further, several patents he handled have been successfully asserted in federal lawsuits.
Glen’s skills and experience include helping inventors identify and preserve inventions, preparing and prosecuting patents and trademarks in the U.S. and foreign countries, developing and maintaining complex patent and trademark portfolios, performing infringement and invalidity evaluations of the patents and trademarks of others, negotiating and preparing licenses and other agreements, assisting with company acquisitions and investment rounds, and litigation.
Before becoming a lawyer, Glen was an engineer at the Hanford Nuclear Reservation in eastern Washington. In this capacity he became certified to work in radiation areas, and helped to clean up toxic substances.
Prior to joining the firm, Glen was a partner for several years at Knobbe, Martens Olson & Bear, LLP.
Admitted to practice law in California
Registered to practice before the U.S. Patent and Trademark Office
Reuben Clark Law Society (former Chair, Orange County, CA chapter)
BYU Management Society
Orange County Bar Association
Luraco Health & Beauty, LLC v. Lexor Manufacturing, LLC, IPR2019-00204, Patent 46,655 E. Represented patent owner in inter partes review proceeding. Achieved Final Judgment that none of the challenged claims were unpatentable.
Foursquare Labs, Inc. v. Silver State Intellectual Technologies, Inc., IPR2014-00159, Patent 7,343,165. Represented patent owner in inter partes review proceeding. Achieved Final Judgment that none of the challenged claims were unpatentable.
Inter partes reexamination no. 95/001,717, challenging US Patent 7,858,149. Took over representation after Requestor had received an adverse decision from examiner. Handled appeal to overturn examiner’s adverse findings, and handled further proceedings, achieving cancellation of several claims and major amendments to remaining claims so there was no longer any argument that Requestor infringed the patent. As a result, a Summary Judgment of Patent Infringement in a corresponding lawsuit was vacated, and patent infringement accusations were removed from the lawsuit.
Emazing Lights, LLC v. Ramiro Montes de Oca, 15-cv-01561 (Central District of California). Supported litigation team of plaintiff in lawsuit asserting US Patent 9,148,931 (which was handled by Mr. Nuttall). Defeated motion for summary judgment, leading to settlement in which defendant ceased all use of plaintiff’s technology.
American Network, Inc. v. Sorenson Communications, Inc., 10 CV 8342 (SAS) (Southern District of New York). Represented defendant in trademark litigation. Negotiated settlement in which plaintiff ceased all use of defendant’s mark.
In re Pyro-Spectaculars, Inc., 63 U.S.P.Q.2d 2022 (TTAB 2002). Represented client in appeal before U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board. Won reversal of examining attorney’s final refusal to register client’s mark.
Mission Hockey Co. v. Roller Derby Skate Corp., SA CV 02-1117-AHS (Central District of California). Represented plaintiff in patent litigation. Won summary judgment that defendant’s product infringed plaintiff’s patent. Negotiated settlement in which defendant paid royalties for past and future sales. 2004.
Ex parte Thomas J. Lochtefeld and Jeffery W. Henry, U.S. Board of Patent Appeals and Interferences, Appeal No. 2009-011101: Represented patent applicant in appeal of rejection of utility patent application. The Appeals Board overturned the examiner’s rejection, and all of the claims were issued in U.S. Patent No. 8,096,891, entitled “Redundant Array Water Delivery System for Water Rides”