News & Analysis as of

Depositions Motion to Amend

Akin Gump Strauss Hauer & Feld LLP

Lack of Diligence in Deposing Key Inventor Precludes Amending Answer to Add Inequitable Conduct Defense

The Central District of California denied a defendant’s motion for leave to amend to allege inequitable conduct due to the defendant’s delay in deposing a key inventor until the end of fact discovery. The district court held...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tips for Surviving an Instituted IPR: From Depositions to Sur-Replies

As a Patent Owner in an instituted Inter Partes Review (IPR), there are dozens of considerations to bear in mind – from strategically approaching depositions and maximizing expert testimony, to drafting the final say in your...more

Goodwin

Issue Eighteen: PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Jones Day

PTAB Finds Some Pipeline Patent Claims Patentable, Others Amendable

Jones Day on

In a rare successful motion to amend, the PTAB found certain claims of a pipeline monitoring systems patentable, and allowed substitution of amended claims for others deemed unpatentable. See Syrinix Inc. v. Blacoh Fluid...more

Nutter McClennen & Fish LLP

PTAB Update: Lectrosonics Designated as Precedential Providing Guidance on Amendment Practice in an Inter Partes Review

On March 7, 2019, the Patent Trial and Appeal Board (PTAB) designated the decision in Lectrosonics, Inc. v. Zaxcom as precedential. The order provides guidance and information on practice surrounding a patent owner’s motion...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - June 2018

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle post-grant proceedings at the USPTO's Patent Trial and Appeal Board. It is designed to increase return on investment for...more

Carlton Fields

Quick Trial Checklist

Carlton Fields on

This chart provides a quick reference regarding motions and objections that may be made immediately prior to, during, and immediately after trial to preserve issues for appellate review. ...more

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