News & Analysis as of

Depositions Inter Partes Review (IPR) Proceeding

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

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

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #18 for Surviving an Instituted IPR: Defending Depositions

In our penultimate patent owner tip for surviving an instituted IPR, we turn our discussion to defending the deposition of your expert. At this stage of the proceeding, your Patent Owner Response has been filed, and all the...more

Ward and Smith, P.A.

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

Ward and Smith, P.A. on

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

PTAB Reinforces Uneven Evidentiary Playing Field in IPRs

The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) recently grappled with the admission into evidence of expert deposition testimony that was presumably harmful to the petitioner in an inter partes...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

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

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

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

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

PTAB Finds Some Pipeline Patent Claims Patentable, Others Amendable

Jones Day on

In a rare successful motion to amend, the PTAB found certain claims of a pipeline monitoring systems patentable, and allowed substitution of amended claims for others deemed unpatentable. See Syrinix Inc. v. Blacoh Fluid...more

Nutter McClennen & Fish LLP

PTAB Update: Lectrosonics Designated as Precedential Providing Guidance on Amendment Practice in an Inter Partes Review

On March 7, 2019, the Patent Trial and Appeal Board (PTAB) designated the decision in Lectrosonics, Inc. v. Zaxcom as precedential. The order provides guidance and information on practice surrounding a patent owner’s motion...more

Esquire Deposition Solutions, LLC

4 Things You Must Know about AIA Trial Depositions

After the America Invents Act (AIA) passed with a vote of 304-177 in June 2011, inventors seeking patents had to be the first to file to lay claim to their innovations. As the first major shift in patent law since 1952,...more

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

PTAB Strategies and Insights - June 2018: PTAB AIA Proceeding Deposition Strategy

Depositions are an important, yet sometimes overlooked, part of AIA proceedings, such as inter partes review (“IPR”) trial proceedings. It is important to understand that IPR depositions differ in significant ways – both in...more

Akin Gump Strauss Hauer & Feld LLP

Cross-Examination Is Not Authorized as Routine Discovery Where the Relied-Upon Testimony Is from an Underlying Litigation

On January 30, 2017, the Patent Trial and Appeal Board (PTAB or “the Board”) granted in part the petitioner’s motion to strike various declarations of a named inventor because the patent owner failed to make him available for...more

Akin Gump Strauss Hauer & Feld LLP

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

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

McDermott Will & Emery

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

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

McDermott Will & Emery

Deposition of Declarants Is Limited after Routine Discovery

McDermott Will & Emery on

Valeo, Inc. v. Magna Electronics, Inc. - In an Order on Conduct of the Proceedings, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) denied a patent owner’s request to depose a...more

McDermott Will & Emery

Play Nice in the Deposition Sandbox

McDermott Will & Emery on

Medtronic, Inc. v. Norred - In two separate orders on the conduct of the proceeding, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) came down on the parties for their inability to...more

Foley & Lardner LLP

PTAB Requires Additional Showing for Cross-Examination If Testimony Was Prepared for Another Proceeding

Foley & Lardner LLP on

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

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