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Expert Testimony Patent Ownership

Akin Gump Strauss Hauer & Feld LLP

District Court Precludes Experienced Patent Attorney from Testifying as Expert Based on Lack of Pertinent Technical Expertise

A district court recently precluded a patent attorney from testifying as an expert in a patent infringement lawsuit where the proposed expert lacked the requisite technical expertise to assist the trier of fact in...more

Jones Day

PTAB Issues Sanctions for Attempted Extortion During “Settlement Negotiations”

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Director Vidal recently issued sanctions against OpenSky Industries (“OpenSky”) for attempted extortion during settlement negotiations and abuse of the IPR process for US Patent 7,725,759 and awarded $413,264.15 to VLSI...more

Haug Partners LLP

Apple v. Corephotonics: PTAB Decision Focused on Expert’s “Typographical Error” Rather than the Parties’ Arguments Violated...

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On September 11, 2023, the Federal Circuit issued a precedential opinion that vacated and remanded two final written decisions of the Patent Trial and Appeal Board (the “Board”) in Apple, Inc. v. Corephotonics, Ltd.. The...more

McDermott Will & Emery

Bad Connection: Claim Construction Argument without Explanation Given No Weight

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) obviousness decision after finding that the patent owner failed to explain how its cited extrinsic evidence supported its proposed...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

Jones Day

PTAB Orders Petitioner’s Expert to Produce Discovery

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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

Precedential: Live Testimony Not Permitted Absent Prior Declaration

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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

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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

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

PTAB Strategies and Insights - May 2018: “Addendum – Lack of Motivation to Combine – Avoid Declarant Weaknesses”

As follow up to last month’s article on lack of motivation to combine, another just released Board decision in IPR2016-00972 (Paper 18) again found for patent owner because the petition failed to provide a proper motivation...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. Feb. 8, 2018) - In Berkheimer v. HP Inc., the Federal Circuit reviewed the District Court’s summary judgment finding that certain claims of a patent were invalid as...more

Akin Gump Strauss Hauer & Feld LLP

No Rehearing Because of Hindsight Declaring

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

Jones Day

Known Solution to General Problem Provides Sufficient Motivation to Modify Prior Art

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In a final written decision in Bass, et al., v. Fresenius Kabi USA, LLC (IPR2016-00254), the PTAB found that the challenged claims of Fresenius’s U.S. Patent No. 8,476,010, directed to a sterile pharmaceutical composition of...more

Akin Gump Strauss Hauer & Feld LLP

Evidence of Priority to Provisional Application and that Prior Art Was Not Work of Another Defeated Obviousness Challenge in IPR

The Patent Trial and Appeal Board (the “Board”) issued a final written decision determining that the Coalition for Affordable Drugs (ADROCA), LLC (“Petitioner”) failed to prove unpatentable claims 1-52 of U.S. Patent No....more

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