News & Analysis as of

Discovery Patents Expert Testimony

A&O Shearman

Poster Presentation Tied To Business Objectives Serves As Evidence Of Infringement Of Patented Methods

A&O Shearman on

On February 12, 2025, the United States District Court for the District of Delaware denied defendant Parse Biosciences’s (“Parse”) motions for summary judgment that: (i) Parse had never actually conducted any direct or...more

McDermott Will & Emery

Judicial Bias and Erroneous Admission of Expert Testimony Prompt Case Reassignment

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed a district court’s decision to admit expert testimony and remanded the case to a different judge, noting that “from the moment this case fell in his lap, the trial...more

Kilpatrick

5 Key Takeaways | Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal)

Kilpatrick on

Kilpatrick partners John Alemanni and Justin Krieger recently presented a CLE addressing “Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal).”...more

Baker Botts L.L.P.

Third Quarter 2024 Federal Circuit Law Update

Baker Botts L.L.P. on

Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (August 23-27): Supporting Damages Expert’s Testimony

With Labor Day around the corner and summer coming to a close, the Federal Circuit had a busy week with a lot of precedential opinions to pick from. Below we provide our usual weekly statistics and our case of the week—our...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2021 #5

MLC Intellectual Property, LLC v. Micron Technology, Inc., Appeal No. 2020-1413 (Fed. Cir. Aug. 26, 2021) - For those interested in an important Section 112 written description case, we recommend reading the Juno...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #9 for Surviving an Instituted IPR: Issues Warranting Limited Additional Discovery

In our previous post we started talking about discovery procedures in inter partes review (“IPR”) proceedings under 37 CFR § 42.51 and, in particular, the scope and timing of seeking limited additional discovery under Rule...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

Knobbe Martens

Non-Expert Testimony on Obviousness Is Inadmissible

Knobbe Martens on

HVLPO2, LLC v. OXYGEN FROG, LLC - Before Newman, Moore, and Chen. Appeal from the United States District Court for the Northern District of Florida. Summary: It is an abuse of discretion to permit a witness to testify...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

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

IP Hot Topic: USPTO Releases a Second Update to the PTAB Trial Practice Guide

On July 15, 2019, the USPTO released a second update to Trial Practice Guide for AIA proceedings. The 64-page update reflects some of the recent opinions that the Board has designated as precedential and includes helpful...more

Jones Day

Live Testimony Remains Important in ITC Investigations

Jones Day on

When parties jointly stipulate to witness statements rather than live direct and cross examination, one might expect the ITC to be receptive to their agreement—after all, such stipulations may save time and resources for...more

Jones Day

Precedential PTAB Order Addresses Witness Examination

Jones Day on

The PTAB panel in Focal Therapeutics, Inc. v. SenoRx, Inc., Case IPR2014-00116 (PTAB July 21, 2014) (Paper 19), provided certain clarifications with regard to the ability to confer with witnesses during examination. This...more

Jones Day

PTAB Orders Petitioner’s Expert to Produce Discovery

Jones Day on

The PTAB recently granted a Patent Owner’s motion to take additional discovery of Petitioner’s expert. In particular, the PTAB ordered Petitioner’s expert to produce documents that identify materials he reviewed in preparing...more

Jones Day

Ground Rules Preclude New Rebuttal Expert Opinions

Jones Day on

Shortly before the evidentiary hearing, ALJ Lord granted Complainant’s motion in limine and excluded certain testimony in the witness statement of Respondents’ expert as precluded by her ground rules governing expert...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Denies Request to Cross-Examine Experts Because Declarations Were Prepared for Other Proceedings and Were Not “Critical”...

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

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

Jones Day

No Genuine Issue of Fact Where Petitioner’s Claim Construction Is Wrong

Jones Day on

The PTAB’s recent decision denying rehearing in United Microelectronics Corp. v. Lone Star Silicon Innovations LLC, IPR2017-01513, Paper 10 (PTAB May 22, 2018) sheds light on the Board’s practice under 37 C.F.R. 42.108(c),...more

Jones Day

Diagrams Not Considered Source Code Under Modified Protective Order

Jones Day on

In a recent Order, ALJ McNamara clarified that while diagrams drawn by an expert depicting the interplay and hierarchy of relevant code modules, inputs, and outputs of source code are to be treated as confidential business...more

Robins Kaplan LLP

Inter Partes Review: Validity Before the PTAB

Robins Kaplan LLP on

The PTAB is beginning to develop a reputation as being harsh towards patent owners and the validity of their patents. Why have patent owners struggled so much before the PTAB? Attorneys Seth Northrop and Cyrus Morton discuss...more

20 Results
 / 
View per page
Page: of 1

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide