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Patents Federal Rules of Evidence

Farella Braun + Martel LLP

What Have We Learned From the First Six Months Under the New Federal Rule of Evidence 702?

As patent practitioners know, Daubert motions can be some of the most hotly contested and pivotal motions in the life of a patent case. These motions are used to exclude testimony from an opponent's expert witness, usually on...more

McDermott Will & Emery

Rules of Evidence Require Weighing Relevance of Evidence Against Potential Prejudice

The US Court of Appeals for the First Circuit affirmed the exclusion of a drug patent in a medical malpractice case, finding that the highly technical language of the patent would more likely confuse a lay jury than be...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2022

Provisur Technologies, Inc. v. Weber, Inc., Appeal Nos. 2021-1942, -1975 (Fed. Cir. Sept. 27, 2022) - In this week’s Case of the Week, the Federal Circuit reviewed an IPR decision and addressed the Patent Trial and Appeal...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Valve Corporation v. Ironburg Inventions Ltd., 8...

Valve Corporation petitioned for inter partes review (IPR) of two patents owned by Ironburg Inventions directed to hand held controllers for game consoles. The Patent Trial and Appeal Board (Board) determined that a key...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Jones Day

Discovery Request Seeking Deposition Preparation Materials Denied

Jones Day on

The Patent Trial and Appeal Board (“PTAB”) recently denied a Motion for Additional Discovery because the movant could not prove beyond mere speculation that the requested documents would be useful to show witness scripting....more

Goodwin

Issue 36: PTAB Trial Tracker

Goodwin on

FORUM SELECTION CLAUSES MAY OR MAY NOT PRECLUDE PTAB REVIEW - In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc., No. 21-1638 (Fed. Cir. Oct. 7, 2021), the Federal Circuit considered...more

McDonnell Boehnen Hulbert & Berghoff LLP

ToolGen Files Motion to Exclude Evidence, Broad Opposes, and ToolGen Replies in Interference No. 106,126

On October 1st, Senior Party ToolGen Inc. filed its Motion to Exclude certain evidence presented by Junior Party the Broad Institute, Harvard University, and MIT (collectively, "Broad") in Interference No. 106,126.  Broad...more

Jones Day

PTAB Permits Incorporation by Reference in Expert Declaration

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The first step in requesting an inter partes review (IPR) of a granted patent is the filing of a petition before the Patent Trial and Appeal Board (PTAB), in which the petitioner states the grounds for the invalidity of the...more

Goodwin

Issue 35: PTAB Trial Tracker

Goodwin on

TIMING OF REQUEST KEY FOR BOARD DECISIONS ON MOTIONS TO TERMINATE - In Ocado Group PLC v. AutoStore Technology AS, PGR2021-00038 (July 30, 2021), Petitioner moved to withdraw its petition, arguing that efficiency favored...more

McDermott Will & Emery

The Application of “Authentication by Comparison” at the PTAB

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Directly addressing the application and operation of the Federal Rules of Evidence in proceedings before the Patent Trial & Appeal Board (Board), the US Court of Appeals for the Federal Circuit affirmed-in-part and...more

McDermott Will & Emery

When it Comes to Method of Use Claims, Preamble Language Regarding Intended Use is Limiting

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Directly addressing the application and operation of the Federal Rules of Evidence in proceedings before the Patent Trial & Appeal Board (Board), the US Court of Appeals for the Federal Circuit affirmed-in-part and...more

McDonnell Boehnen Hulbert & Berghoff LLP

Broad Opposes CVC's Motion to Exclude Evidence and CVC Files Reply

Late last month, Junior Party University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (hereinafter, "CVC") and Senior Party The Broad Institute, Massachusetts Institute of Technology, and...more

McDonnell Boehnen Hulbert & Berghoff LLP

CRISPR Interference Parties File Motions to Exclude Evidence and for Oral Hearing

Junior Party University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (hereinafter, "CVC") and Senior Party The Broad Institute, Massachusetts Institute of Technology, and Harvard University...more

McDermott Will & Emery

If it’s Not Legit, You Can’t Admit

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The US Court of Appeals for the Federal Circuit affirmed a district court ruling of non-infringement based on the inadmissibility of unauthenticated printouts of source code as evidence. Wi-LAN Inc. v. Sharp Elecs. Corp.,...more

McDonnell Boehnen Hulbert & Berghoff LLP

HVLPO2, LLC v. Oxygen Frog, LLC (Fed. Cir. 2020)

Expert witness testimony is a frequent (almost ubiquitous) feature of patent litigation, if only because questions of the state of the art or the understanding of one having ordinary skill in the art are almost always at...more

BakerHostetler

Settlement Offers Can Be Used Against You (in a Patent Case)

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Rule 408 of the Federal Rules of Evidence protects settlement communications. The language of the rule is clear. Such communications are “not admissible . . . to prove or disprove the validity . . . of a disputed claim.” ...more

Vedder Price

The Seventh Circuit Addresses the Use of Utility Patents as Evidence of Functionality of Trade Dress

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On June 12, 2019, the U.S. Court of Appeals for the Seventh Circuit decided Bodum USA, Inc. v. A Top New Casting Inc., No. 18-3030, 2019 U.S. App. LEXIS 17555 (7th Cir. June 12, 2019). The case, led by Vedder Price...more

Jones Day

PTAB Webinar Addresses Hearsay and Authentication Issues

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On December 6, 2018, the PTAB hosted a Boardside Chat webinar on hearsay and authentication. The Administrative Patent Judges presenting the webinar were Michael Zecher, Tom Giannetti, and Grace Obermann. The webinar began...more

Akin Gump Strauss Hauer & Feld LLP

Evidence of Failed IPR Precluded When Validity No Longer at Issue

The Southern District of New York has granted a motion in limine precluding evidence of Defendant’s failed inter partes review (IPR) petition. The parties to the lawsuit are in the business of manufacturing and selling...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

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

Exclusion of Evidence at the PTAB - Does it ever happen?

Experienced PTAB practitioners know that the Board rarely grants motions to exclude evidence in Post Grant proceedings. In this article, we look beyond the grim anecdotes and provide some statistics, as well as the Board’s...more

Akin Gump Strauss Hauer & Feld LLP

The PTAB Holds That Testimony Concerning Customer Statements and Their State of Mind Constitutes Hearsay

On September 22, 2017, the United States Patent Trial and Appeal Board (PTAB) issued a final written decision regarding claims directed to a switching regulator comprising a power switch and a control circuit. The PTAB found...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Says PTO Submissions can Waive Privilege to Future Communications

On July 20, 2017, the United States Court of Appeals for the Federal Circuit in In re OptumInsight denied OptumInsight’s petition for writ of mandamus on privilege waiver. The court held that the District Court for the...more

McDermott Will & Emery

Federal Patent-Agent Privilege Not Recognized in Texas State Courts

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Finding that Texas state courts lacked authority to recognize common-law discovery privileges, the Texas Court of Appeals for the Fifth District refused to recognize the US Court of Appeals for the Federal Circuit’s recently...more

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