Imagine sitting in a conference room with your carefully crafted set of questions for a deposition, and you are exploring the basis for an opposing expert’s opinions. But instead of giving thoughtful answers, the expert...more
[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
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
Long before the AIA, declarations were a tool that was available during patent prosecution to put evidence, e.g., post-filing data and expert opinions, in front of an Examiner to rebut obviousness or lack of enablement...more
The Appointments Clause: Ensuring That PTAB Decisions Are Subject to Constitutional Checks and Balances In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2251, the Federal Circuit ruled that, under the then-existing...more
On Thursday of last week in Telefonaktiebolaget LM Ericsson v. TCL Corporation, the Federal Circuit affirmed two Patent Trial and Appeal Board (PTAB) decisions (IPR2015-01584 and IPR2015-01600) finding that a single claim in...more
TELEFONAKTIEBOLAGET LM ERICSSON v. TCL CORPORATION - Before NEWMAN, LOURIE, and CLEVENGER. Appeal from the Patent Trial and Appeal Board. Summary: Publications shelved in publicly accessible libraries may be publicly...more
In an ongoing inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (the “Board”) denied Petitioner Nestlé Healthcare Nutrition, Inc.’s request to cross examine two expert witnesses after Patent Owner...more
Following up on our article on depositions the Board recently denied a motion for sanctions by the Patent Owner, which alleged that the Petitioner’s questioning during deposition exceeded the scope of the witness’s...more
You selected your experts – Ms. Boot (an expert for the patent owner, SneakRTech) and Dr. Slipper, PhD (an expert for the Petitioner, BadGuys) - to assist SneakRTech at the PTAB in cases involving aglet patents against...more
On Friday, March 9, 2018, more than 50 participants at Sterne Kessler’s inaugural Global IP Strategy Conference discussed the PTAB’s reliance on expert declarations at the institution phase. The Board is relying on these...more
The PTAB Strategies and Insights Newsletter is designed to increase return on investment for all stakeholders looking at the entire patent life cycle in a global portfolio. This month we tackle three important issues: ...more
The Patent Trial and Appeal Board (PTAB) denied a petitioner’s request for rehearing of its decision declining institution of inter partes review of a patent owned by Bose Corporation (“Patent Owner.”) The PTAB upheld its...more
In a final written decision in Duncan Parking Tech., Inc. v. IPS Group Inc., IPR2016-00067, Paper 29 (P.TA.B. Mar. 27, 2017), the PTAB evaluated whether a prior art reference alleged to anticipate the challenged patent under...more
Many parties in front of the Patent Trial and Appeal Board (Board) struggle with the handling of evidentiary issues. This struggle is heightened when expert evidence is the focus. In Tietex International, Ltd. v. Precision...more
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
Addressing the requirements to offer supplemental evidence and information, the Patent Trial and Appeal Board (PTAB or Board) denied the patent owner’s requests for authorization to file a motion to submit supplemental...more
Addressing the circumstances for submitting supplemental evidence in an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) allowed the petitioner to submit a responsive declaration after the due date...more
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
T-Mobile USA, Inc. v. Mobile Telecoms. Technologies, LLC - Following a conference call held with respect to three separate proceedings presenting an identical issue, the U.S. Patent and Trademark Office’s Patent Trial...more
A recent order from the Patent Trial and Appeal Board (“Board”) in an inter partes review illustrates how the Board may handle situations where a party seeks to depose a declarant whose testimony was submitted through a...more