News & Analysis as of

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

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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

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

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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

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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

Mintz

Delaware District Court Finds No Work-Product or Common Legal Interest Protection for Certain Pre-Suit and Pre-Agreement Documents...

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Recently, the District of Delaware held that a there was no work-product protection, and no common legal interest protection covering communications and documents shared between a patent owner and a third-party litigation...more

McDonnell Boehnen Hulbert & Berghoff LLP

Patent Litigation Management - Strategic Decisions Can Help Manage the Cost of Litigation

With respect to patent litigation one thing is true – it can be very expensive. This expense is often viewed as a barrier to patent owners enforcing their patent rights and properly protecting their inventions and the...more

Jones Day

PTAB Denies Discovery on Chipsets Purportedly Related to Proper Interpretation of Reference

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In Semiconductor Components Industries, LLC v. Power Integrations, IPR2016-00809, Paper 65 (PTAB Aug. 4, 2017), the PTAB denied the patent owner’s request for authorization to serve requests for production seeking documents...more

Morgan Lewis

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

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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

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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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