News & Analysis as of

Inter Partes Review (IPR) Proceeding Patent Ownership Discovery

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

PTAB Year in Review – Caveat Experimenter: Using Experimental Data in PTAB Proceedings Comes With Risks

Parties involved in Patent Trial and Appeal Board (PTAB) proceedings sometimes contemplate submitting experimental data to support their positions. Although such data can be useful, there also are risks. Several recent cases...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

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

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

PTAB Strategies and Insights - May 2019: Board Immediately Distinguishes Precedential NHK Decision in Amazon Institution Decision

Just after making the NHK and Valve Corp decisions precedential, the Board distinguished them in Amazon. While NHK and Valve Corp resulted in denial, in Amazon the Board instituted trial despite Amazon having similar issues...more

Jones Day

Speculation Insufficient To Justify Routine Discovery

Jones Day on

The PTAB has discretion to permit “routine discovery” under 37 C.F.R. §42.51(b)(1)(iii) when that discovery “is narrowly directed to specific information known to the responding party to be inconsistent with a position...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Grants Limited Alternative to Overbroad and Delayed Additional Discovery Requests in IPR

The Patent Trial and Appeal Board (“PTAB”) granted-in-part Patent Owner Twilio Inc.’s motion for additional discovery pursuant to 37 C.F.R. § 42.51(b)(2). Though the “Patent Owner delayed in seeking the requested discovery”...more

Jones Day

Failure to Refute Challenges to Real Parties-in-Interest Terminates 3 IPR Proceedings

Jones Day on

In prior blog posts, we have commented on PTAB decisions terminating IPR proceedings due to the Petitioner’s failure to identify all real parties-in-interest. See blog posts on Sanction For Failing to Update Real Party In...more

Morgan Lewis

2017 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

Morgan Lewis on

Recent patent reform legislation, rule changes, and court rulings are expected to have a significant impact on the strategies of both patent owners and petitioners....more

Goodwin

Issue Two: Keeping Tabs on the PTAB

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

McDermott Will & Emery

Exclusive Ownership” Is Not Necessary for Standing in an IPR - Legend3D Inc. v. Prime Focus Creative Services Canada Inc.

Addressing the standing requirement for participating in an inter partes review (IPR), the U.S. Patent Trial and Appeal Board (PTAB or Board) held that, unlike district court, there is no “exclusive ownership” requirement for...more

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

Post-Grant Proceedings: The Top Seven Things You Should Know About the Proposed Rule Changes

On August 20th, the U.S. Patent and Trademark Office published proposed rules that would amend the consolidated set of rules currently governing Inter Partes Reviews, Post-Grant Reviews, Covered Business Method Reviews, and...more

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