News & Analysis as of

Discovery Inter Partes Review (IPR) Proceeding

Fish & Richardson

Five Tactics for Cybersecurity Companies to Defeat Patent Infringement Claims

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Navigating patent infringement claims requires a deep understanding of both the legal landscape and the specifics of the technology at stake, especially in the fast-evolving cybersecurity sector. Creative litigation...more

Patterson Belknap Webb & Tyler LLP

Time May Not Be on Your Side: Judge Ho Allows the Addition of New Parties Discovered During Stay

Defendants in patent cases should be wary of the possibility that a plaintiff will attempt to add new defendants after a stay for inter partes review is lifted. In a pending case involving patents directed to “space...more

Akin Gump Strauss Hauer & Feld LLP

Defendant’s Non-Party Status to IPRs Dooms Stay Request, Despite Agreement to Be Bound by IPR Estoppel

The Western District of Texas recently denied a defendant’s motion to stay pending inter partes review based in part on the defendant’s status as a non-party in the IPR proceedings. In doing so, the district court focused on...more

Jones Day

PTAB Denies Discovery of Draft Declaration

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On November 18, 2022, a panel of three PTAB administrative patent judges denied a Patent Owner’s Request for Additional Discovery in Twitter, Inc. v. Palo Alto Research Center Inc., IPR2021-01398. The PTAB found that...more

Jones Day

Motion for Additional Discovery Based on Unraised Arguments Denied

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The Patent Trial and Appeal Board (“PTAB”) recently denied a Petitioner’s Motion for Additional Discovery. Scientific Design Co., Inc. v. Shell Oil Co., IPR2021-01537, Paper 18 (PTAB Aug. 12, 2022). In an inter partes review...more

Jones Day

Patent Owner Ordered To Produce Infringement Contentions

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On May 3, 2022, a panel of three PTAB administrative patent judges granted a motion for additional discovery in TCL Industries Holdings Co., Ltd. v. Parkervision, Inc., IPR2021-00985, (PTAB 2022), in which the PTAB deemed the...more

McDermott Will & Emery

Claim Construction and Jurisdictional Discovery Are More Than Skin Deep

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Referencing the use of antecedents from a “wherein” clause, the US Court of Appeals for the Federal Circuit reversed a district court’s claim construction and vacated its summary judgment ruling of indefiniteness that relied...more

Jones Day

PTAB Does Not Provide a Supplemental Discovery Venue

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Following the grant of institution of a recent IPR petition in the matter of Satco Products, Inc. v. The Regents of the University of California, IPR2021-00662, Paper 26 (PTAB Feb. 11, 2022) concerning U.S. Patent No....more

Jones Day

Discovery Request Seeking Deposition Preparation Materials Denied

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The Patent Trial and Appeal Board (“PTAB”) recently denied a Motion for Additional Discovery because the movant could not prove beyond mere speculation that the requested documents would be useful to show witness scripting....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

Akin Gump Strauss Hauer & Feld LLP

Unavailability of Witness for Cross-Examination Dooms Reliance on Affidavit Testimony in PTAB Proceeding

In a series of related inter partes review proceedings, the Patent Trial and Appeal Board recently granted a petitioner’s motion to strike the sworn affidavit of a witness who was unwilling to submit to cross-examination. In...more

Jones Day

Limited Experiment Protocol Discovery Granted

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In an inter partes review (IPR), the scope of discovery is expressly stated in the C.F.R. and additional discovery must either be agreed upon by the parties or granted by the Board when it “is necessary in the interest of...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2021 #5

MLC Intellectual Property, LLC v. Micron Technology, Inc., Appeal No. 2020-1413 (Fed. Cir. Aug. 26, 2021) - For those interested in an important Section 112 written description case, we recommend reading the Juno...more

Goodwin

Issue 34: PTAB Trial Tracker

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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

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #9 for Surviving an Instituted IPR: Issues Warranting Limited Additional Discovery

In our previous post we started talking about discovery procedures in inter partes review (“IPR”) proceedings under 37 CFR § 42.51 and, in particular, the scope and timing of seeking limited additional discovery under Rule...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #8 for Surviving an Instituted IPR: Additional Discovery is Possible, but Should be Carefully Planned

Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. There are three types of discovery at the Patent Trial...more

Jones Day

In Your Dreams – Additional PTAB Discovery Remains Elusive

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Discovery in an IPR proceeding is limited compared to district court litigation in order to focus the proceedings and promote speed and efficiency. The PTAB Practice Guide and 37 C.F.R 42.51 provide for three types of...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Discovery Requests Targeting Objective Evidence of Nonobviousness Denied Under Garmin Framework

The Patent Trial and Appeal Board denied a patent owner’s motion for additional discovery of documents—from petitioners, real parties-in-interest, and third parties—because patent owner failed to show that such discovery...more

Porter Hedges LLP

To Stay Or Not To Stay: The Impact Of IPRs On Patent Litigation

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Over the course of the past year, trial attorneys in state and federal courts have seen cases effectively stayed by COVID-related delays. COVID hampered in-person discovery and caused courts to re-set jury trial dates. Such...more

Ward and Smith, P.A.

Stay in Your Lane: Defining the Scope of an IPR Deposition

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The regulations governing discovery in an inter partes review ("IPR") proceeding do not provide for the same methods of discovery available in a patent infringement lawsuit. As such, when opportunities for discovery...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #2 for Surviving An Instituted IPR: Don’t Swing for the Fences in IPR Depositions

As discussed in our previous post, one of the most critical tasks for Patent Owners during the Inter Partes Reviews (“IPR”) discovery period is deposing the Petitioner’s expert. Since IPR depositions are treated differently...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - November 2020 #3

C.R. Bard Inc. v. AngioDynamics, Inc., Appeal No. 2019-1756, -1934 (Fed. Cir. Nov. 10, 2020) - Our Case of the Week is one of two cases decided this week in which the Federal Circuit finds that a district court jumped the...more

Fish & Richardson

What Discovery is Available during Inter Partes Review?

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Litigants facing their first inter partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB”) may be surprised to learn that discovery timing, procedures, and scope are quite different compared to district court...more

Jones Day

A Compelling Decision – Board Addresses Scope Of Work Product Protection

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In a series of IPR proceedings between Petitioner Adobe Inc. and Patent Owner RAH Color Technologies LLC, the Patent Trial and Appeal Board declined to extend attorney work product protection to deposition questions seeking...more

Akin Gump Strauss Hauer & Feld LLP

Prior Art That Was Considered but Not Relied Upon by an Expert is Fair Game for Discovery in IPRs

In inter partes review (IPR) proceedings of patents relating to printer technology, the Patent Trial and Appeal Board (PTAB) granted Patent Owner’s motion to compel testimony over Petitioner’s arguments that the information...more

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