News & Analysis as of

Testimony Inter Partes Review (IPR) Proceeding

McDermott Will & Emery

Status Quo Has Few Defenders at PREVAIL Act Senate Subcommittee Hearing

McDermott Will & Emery on

On November 8, 2023, the US Senate Judiciary Subcommittee on Intellectual Property heard testimony from four witnesses on the proposed Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act....more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Google LLC v. IPA Technologies Inc., 34 F.4th 1081...

Google petitioned for IPR of two patents owned by IPA. Each of the asserted grounds relied on the Martin reference. Martin lists as authors the two inventors of the challenged patents and a third person, Dr. Moran. During...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

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

2021 PTAB Year in Review: Analysis & Trends: Developments in Antedating Asserted Art at the PTAB

USPTO Patent Trial and Appeal Board (PTAB) decisions in 2021 show that antedating a prior-art reference remains a viable option to knock out a ground in an inter partes review (IPR) petition—patent owners were successful in...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

Knobbe Martens

Authentication of Prior Art in an IPR Does Not Require Testimony

Knobbe Martens on

VALVE CORPORATION v. IRONBURG INVENTIONS LTD. Before Newman, Lourie, and Dyk.  Appeal from the Patent Trial and Appeal Board. Summary: For purposes of authenticating a prior art reference in IPR proceedings, the Board...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #5 for Surviving An Instituted IPR: The Right Expert Can Save Your Patent

The right expert can be the critical piece that saves the validity of your patent. Finding the right expert for a patent owner requires careful selection and due diligence. We previously detailed how your expert’s testimony...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #1 For Surviving An Instituted IPR: Approach IPR Depositions Like A Cross-Examination

As a Patent Owner in an instituted Inter Partes Reviews (“IPR”), one of the first and most critical tasks before you is deposing the Petitioner’s witnesses, including its experts. But approaching an IPR deposition like a...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - February 2020 #2

PATENT CASE OF THE WEEK - Samsung Electronics America, Inc. v. Prisua Engineering Corp., Appeal No. 2019-1169, -1260 (Fed. Cir. Feb. 4, 2020) - Our case of the week concerns issues particular to inter partes review...more

Jones Day

A Compelling Decision – Board Addresses Scope Of Work Product Protection

Jones Day on

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

Akin Gump Strauss Hauer & Feld LLP

Challenge to a Named Inventor’s Credibility on Case-Dispositive Issue Warrants Live Testimony in IPR

The Patent Trial and Appeal Board allowed live testimony in MPOWERED INC. v. LuminAID Lab, LLC, IPR2018-01524, on November 1, 2019, where a panel granted Patent Owner’s Motion for Live Testimony from a named inventor of the...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

Kilpatrick

Counsel are Permitted to Confer with Witness Before Redirect

Kilpatrick on

On July 10, 2019, the PTAB’s Precedential Opinion Panel designated Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 19 (PTAB July 21, 2014), as precedential. By way of background, during PTAB proceedings, direct...more

Mintz - Intellectual Property Viewpoints

PTAB Clears Up Uncertainty Regarding the Rules on Conferring with a Witness During Inter Partes Review Depositions

Last week the Patent Trial and Appeal Board (“PTAB”) designated as precedential a decision from 2014, which found that counsel can confer with a deponent at the conclusion of cross examination and prior to redirect. Through...more

Williams Mullen

PTAB Designates as Precedential 2014 Decision Governing Communications with Counsel During Deposition

Williams Mullen on

On July 10, 2019, the Patent Trial and Appeal Board designated as precedential Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 19 (PTAB, July 21, 2014), which concerned the rules governing depositions in the...more

Knobbe Martens

Metadata of conception documents could help independently corroborate inventor testimony of prior conception

Knobbe Martens on

KOLCRAFT ENTERPRISES, INC. V. GRACO CHILDREN’S PRODUCTS, INC. Before Moore, Reyna, and Chen. Appeals from the Patent Trial and Appeal Board. Summary: Inventor testimony of prior conception must be independently...more

Jones Day

No Basis For Broad Exclusion Of Inventor Testimony

Jones Day on

The Board has broad discretion to determine how much weight should be given to inventor testimony, but as long as the testimony does not relate to the inventor’s opinion about the meaning of a claim term, there is no basis...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2019 #4

PATENT CASE OF THE WEEK - Papst Licensing GMBH & Co. KG v. Samsung Electronics America, Inc., Appeal No. 2018-1777 (Fed. Cir. May 23, 2019) - In a sternly-worded decision this week, the Federal Circuit held claims to...more

Akin Gump Strauss Hauer & Feld LLP

The PTAB Holds That Testimony Concerning Customer Statements and Their State of Mind Constitutes Hearsay

On September 22, 2017, the United States Patent Trial and Appeal Board (PTAB) issued a final written decision regarding claims directed to a switching regulator comprising a power switch and a control circuit. The PTAB found...more

Schwabe, Williamson & Wyatt PC

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

Our report includes discussions of six of the precedential cases decided in the past week and will include the other three cases in next week’s report. In Aylus v. Apple, the panel finds prosecution disclaimer in a...more

Morgan Lewis

An Attempt at Efficiency: A Look at the TTAB’s Upcoming Rule Changes

Morgan Lewis on

The rule changes are aimed at streamlining proceedings before the TTAB. The Trademark Trial and Appeal Board (TTAB or the Board) will implement several important rule changes as of January 14, 2017. The changes will...more

Foley & Lardner LLP

Rolling the Dice on Foreign Depositions in IPR Proceedings

Foley & Lardner LLP on

In litigation, it is not uncommon for depositions to be taken outside the United States, particularly when a given witness resides outside the United States and cannot or does not wish to travel to the United States. In IPR...more

Planet Depos, LLC

White Paper: Inter Partes Reviews and Court Reporters

Planet Depos, LLC on

What have we learned about Inter Partes Reviews (IPR) since its inception on September 16, 2012? Since the September 16, 2012, effective date of the AIA trial provisions, 3,277 IPR petitions have been filed through July...more

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

Post-Grant Proceedings: The Top Seven Things You Should Know About the Proposed Rule Changes

On August 20th, the U.S. Patent and Trademark Office published proposed rules that would amend the consolidated set of rules currently governing Inter Partes Reviews, Post-Grant Reviews, Covered Business Method Reviews, and...more

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