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Witnesses Patent Trial and Appeal Board

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #3 for Surviving An Instituted IPR: How Patent Owner Experts Go from Zero to Hero

Drafting the expert declaration is another critical task for Patent Owners during the inter partes review (“IPR”) discovery period. As noted in our previous post, IPR expert witnesses provide declarations as affirmative...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

McDonnell Boehnen Hulbert & Berghoff LLP

CRISPR Chronicles Continue

While those interested in the outcome await the April 9th filing of motions authorized by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) in Interference Nos. 106,126 (between Senior Party Toolgen...more

McDonnell Boehnen Hulbert & Berghoff LLP

Broad Files Motion Opposing CVC's Motion to Subpoena Witnesses

At the end of October, in Interference No. 106,115 between Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, "Broad") and Junior Party the University of...more

Fish & Richardson

Depositions for Inter Partes Review: How Do They Work?

Fish & Richardson on

Any litigator will be familiar with the routine expectations of a deposition: eight hours in a conference room, gathering every fact and admission possible from a witness, and countless objections. Litigators may be surprised...more

Jones Day

PTAB Grants Rare Request For Live Witness Testimony In IPR

Jones Day on

While PTAB proceedings are ordinarily decided “on the papers,” in certain rare cases the Board will permit live witness testimony at the oral hearing. The Board’s precedential decision in K-40 v. Escort explains that...more

McDermott Will & Emery

PTAB: Lawyers Permitted to Confer with Witnesses to Prepare Redirect

McDermott Will & Emery on

Addressing the scope of Patent Trial and Appeal Board (PTAB) guidelines that prohibit lawyers from conferring with their witness during cross-examination, the PTAB designated as precedential a 2014 decision permitting lawyers...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

Jones Day

Precedential: Live Testimony Not Permitted Absent Prior Declaration

Jones Day on

In a recent decision that the PTAB designated as precedential, the Board denied a patent owner’s request to provide live testimony from the inventor of the challenged patent at the oral hearing. In DePuy Synthes Products,...more

Jones Day

Precedential Opinion Provides Factors For Deciding Whether To Allow Live Testimony

Jones Day on

Generally, the PTAB does not allow live testimony at oral argument, but recently it designated one of its 2014 decisions as precedential to give guidance as to when the Board will allow live testimony at oral argument. K-40...more

Foley & Lardner LLP

Deposition Practice Tips: PTAB Guidance for Dealing With Suspected Witness Coaching

Foley & Lardner LLP on

Question: What can you do when you suspect that opposing counsel engaged in inappropriate witness coaching during a PTAB deposition? Answer: Ask the witness about the suspected off-the-record discussions and call the Board...more

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