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Patent Validity Inter Partes Review (IPR) Proceeding Expert Testimony

Baker Botts L.L.P.

Discretionary Denials at the PTAB: Strategic Insights for Petitioners and Patent Owners in a Shifting Landscape

Baker Botts L.L.P. on

A set of recently issued memoranda by United States Patent and Trademark Office (“USPTO”) officials has re-energized the debate around discretionary denials in post-grant trials at the Patent Trial and Appeal Board (“PTAB”)....more

Morgan Lewis

PTAB Emphasizes Expert Availability and Clarifies Fintiv Inquiry for Prior District Court Cases

Morgan Lewis on

The US Patent Trial and Appeal Board on December 23, 2021, instituted an inter partes review even though an unrelated party had already unsuccessfully challenged the validity of the patent in district court. In the decision...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #4 For Surviving An Instituted IPR: Take the Time to Use Your Expert as an Expert

The expert declaration provides a unique opportunity for Patent Owners to bolster their case during the discovery period of an inter partes review (“IPR”) proceeding. We previously detailed how to effectively use an expert...more

Goodwin

The 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

Sunstein LLP

FanDuel Learns the Hard Way: An IPR Challenge to Any Patent Claim May be Lost if Not Comprehensive and Rigorous Enough

Sunstein LLP on

As we demonstrated in our own successful appeal, Arendi S.A.R.L. v. Apple Inc. (Fed. Cir. 2016), a petition for inter partes review (“IPR”) may fail when an expert declaration lacks detailed explanation. An expert’s...more

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

Federal Circuit Appeals from the PTAB: Summaries of Key 2017 Decisions

In 2016, the US Court of Appeals for the Federal Circuit docketed more appeals from the US Patent and Trademark Office (PTO) than any other venue—a first in its over 30-year history. The post grant proceedings created by the...more

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