News & Analysis as of

Expert Witness Patents

“A Reasonable Adjudicator Would have Wanted to Review this Evidence.”

In Ultratec, Inc. v. Captioncall, LLC., [2016-1706, 2016-1707, 2016-1708, 2016-1709, 2016-1710, 2016-1712, 2016-1713, 2016-1715, 2016-2366] (August 28, 2017), the Federal Circuit vacated and remanded Board decisions...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Today the Circuit agreed to hear en banc Nantkwest v. Matal,in which the panel had reversed a district court decision that had rejected the PTO’s position that applicants who appeal a district court must pay the PTO’s legal...more

A Comparison of US and EPO Post Grant Practices

Challenging the validity of a patent through the courts of Europe and the United States can be a time-consuming and expensive process. Oppositions at the European Patent Office (EPO) and US post-grant cancellation...more

District Court deference to PTAB regarding priority claim? Not necessarily.

by Jones Day on

In instituting IPR of a particular patent, the PTAB found that the patent was not entitled to its priority claim, thus opening it up to invalidity attacks. However, because the PTAB’s decision was not being challenged in the...more

Patent Owner Submits His Own Expert Declaration and Then Refuses to Appear for a Deposition; Board Authorizes Petitioner to Move...

On January 10, 2017, the Patent Trial and Appeal Board (the “Board”) ruled that Petitioner’s inability to depose, and therefore cross-examine, Patent Owner’s expert could warrant striking the expert’s declaration....more

Attorney-Client Privilege Held Not to Apply to Nonreporting Employee/Expert

by Reed Smith on

Many years ago, we represented a client in a quandary. (We know, we know: that’s pretty much always the case.) The product had been sold for many decades, the early history was important in marshalling a defense, and there...more

PTAB Institution Rate Continues To Lag Behind 2014 Rate, Highlighting Need For Expert Reports to Adequately Support Petition

by Brooks Kushman P.C. on

Data released by the USPTO Patent Trial and Appeal Board (PTAB) for the Fiscal Year 2016 reveals that the PTAB is granting petitions to review at a rate similar to FY 2015, and significantly below the higher rate in FY 2014....more

Perspectives On The PTAB - Inaugural Issue

We are pleased to share this Perspectives on the PTAB newsletter. Its content is directed toward providing information and analysis of the decisions made by the Patent Trial and Appeal Board. We hope that this newsletter...more

No “Last Resort” Striking of Undisclosed Expert Opinion

by Orrick - IP Landscape on

Order Granting-in-Part Motion to Strike Declaration of Miguel Gomez, VIA Techs., Inc. et al. v. ASUS Computer Int’l, et al., Case No. 14-cv-03586 (Magistrate Judge Paul Grewal) - In a recent order in VIA Techs., Inc. v....more

No Mention Of Damages Is Permitted During Liability Phase Of Trial

by Morris James LLP on

Amgen Inc., et al. v. Sanofi, et al., C.A. No. 14-1317 – SLR (Consolidated), March 2, 2016 - Robinson, J. Order resolving pre-trial evidentiary issues. Plaintiffs seek to preclude defendants from relying on two...more

CLAIM CONSTRUCTION “GAMESMANSHIP”? Quantum Corporation’s Expert Ordered To Sit For Further Deposition On Claim Construction

by Orrick - IP Landscape on

Order Re Crossroads’ Motion To Strike, Quantum Corporation v. Crossroads Systems Inc., Case No. C 14-04293 WHA (Judge William Alsup) - Expert witnesses are often used during patent claim construction to offer extrinsic...more

U.S. International Trade Commission Publishes Proposed Changes to Procedural Rules of Practice

The International Trade Commission proposed a series of new procedural rules, which were published in the Federal Register on September 24, 2015. This blog post provides a summary of the more notable proposed changes to the...more

April Court Decision Round-Up

by Brooks Kushman P.C. on

Note: Beginning this month, IP Law Tracker will highlight significant intellectual property decisions from the U.S. Court of Appeals for the Sixth Circuit and the U.S. District Courts for the Eastern District of Michigan and...more

No Special Rules Regarding Consideration of Expert Declarations in IPR Proceedings - In re International Business Machines Corp.

by McDermott Will & Emery on

In a non-precedential opinion, the U.S. Court of Appeals for the Federal Circuit declined to direct the U.S. Patent and Trademark Office (PTO) to create a particularized written standard for consideration of inter partes...more

Globus Argues Expert’s Faked Credentials Warrants New Trial

by Knobbe Martens on

In 2011, DePuy-Synthes, a subsidiary of Johnson & Johnson Inc. sued Globus Medical, Inc. in the United States District Court for the District of Delaware. In that suit, Synthes alleged that Globus had infringed three Synthes...more

Court Strikes Expert Opinions, No Punishment Intended

by Orrick - IP Landscape on

Order Granting Takeda’s Motion to Strike, Takeda Pharmaceutical Co. LTD., et al., v. TWi Pharmaceuticals, Inc., Case No. 13-cv-02420-LHK (Judge Lucy H. Koh) - The Northern District Patent Local Rules are specifically...more

Reduced Deposition Time in Related AIA Proceedings - Petroleum Geo-Services Inc. v. WesternGeco LLC

by McDermott Will & Emery on

In an order regarding deposition times for expert witnesses in three related inter partes reviews (IPRs), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) ruled that total deposition time...more

Mobile Medical’s Validity Experts Get To Stay Behind The Wheel

As the established gatekeepers with respect to expert testimony, district courts have broad discretion on whether to admit or exclude such evidence. The Vermont district court recently opted to deny patentee defendant...more

Declarant Must Be Made Available for Deposition in the United States - Square, Inc. v. REM Holdings 3, LLC

by McDermott Will & Emery on

Addressing the location of a deposition of patent owner’s declarant, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) concluded that, absent an agreement between the parties to...more

Unavailability of IPR Witness for Deposition Undercuts Testimony

Testimony from a witness in a prior reexamination, or other, proceeding may be useful information to a party in inter partes review proceedings. The party propounding such testimony should be prepared, however, to produce...more

No Cross-Examination of Expert at the Close of Evidence

by McDermott Will & Emery on

A.C. Dispensing Equipment Inc. v. Prince Castle LLC - Addressing the appropriate timing of cross-examination of expert witnesses in an inter partes review (IPR), the U.S. Patent and Trademark Office Patent Trial and...more

Board Declines to Limit Cross Examination

In International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-00587, Paper 27 (November 28, 2014), the Board declined to limit the scope of the patent owner’s cross-examination of petitioner’s...more

PTAB Shows a Willingness to Intervene in Deposition Disputes

Experienced district court litigators are reluctant to “call the judge” when a dispute arises during a deposition. Judges do not want to take the time to deal with mundane discovery disputes and parties do not want to get on...more

Lost (without) the Translation

In Wintek Corporation v. TPK Touch Solutions, Inc., IPR2013-00567, Paper 40, IPR2013-00568, Paper 41 (August 28, 2014), when petitioner arrived at the deposition of patent owner’s expert, it was surprised to find that the...more

Judge Forrest authorizes depositions of declarants to support defendant’s motion for summary judgment

by Robins Kaplan LLP on

Following defendant Monster’s filing of a motion for summary judgment, the patentee provided declarations by two expert witnesses in opposition. Monster noticed depositions of these experts, but the patentee moved for a...more

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