All readers of Patent Challenges are invited to attend our firm’s free IPR webinar series that begins on January 22nd and will continue throughout 2015. This is sure to be an informative series for anyone looking to learn more
PTAB authorizes petitioner’s reply to preliminary response
In Johnson Health Tech Co. LTD v. Icon Health and Fitness, Inc., the PTAB authorized the Petitioner to file a Reply to the Patent Owner’s Preliminary Response in an IPR proceeding. IPR2014-01242, Paper 12 (November 28, 2014).
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Board denies patent owner’s request to file motion to vacate Final Written Decision
In Salesforce.com, Inc. v. VirtualAgility, Inc., the PTAB refused to permit the Patent Owner to file a motion to vacate the Final Written Decision, even though the parties settled while an appeal to the Federal Circuit was still pending.
Board authorizes motion to dismiss following institution
In GTNX, INC. v. INTTRA, INC., the PTAB allowed the Patent Owner to file a motion to dismiss several instituted covered business method (CBM) reviews, despite the fact that the ground for dismissal was not raised in the Patent
PTAB interprets the scope of the declaratory judgment bar for IPR petitions
In Ariosa Diagnostics v. Isis Innovation Limited, the PTAB ruled that filing a civil action for declaratory judgment of noninfringement and asserting an affirmative defense of invalidity do not bar a party from later filing an IPR petition. IPR2012-00022
Do not delay in deposing declarants whose declarations have only been served but not yet filed
In Valeo, Inc. v. Magna Electronics, Inc., the PTAB declined to grant the Patent Owner’s request to order a deposition of Petitioner’s declarant, stating that the Patent Owner was not prevented from deposing the declarant earlier merely because the declarant’s
PTAB denies request to add additional challenge to claims in instituted CBM review
In Indeed, Inc. v. Career Destination Development, LLC, the PTAB denied the Petitioner’s request to file a motion to add the review of certain dependent claims under 35 U.S.C. §112, first paragraph, finding that the Petitioner did not present
PTAB panel creates new procedure for challenging scope of petitioner’s reply
In Toyota Motor Corp. v. Hagenbuch, the PTAB was presented with a novel procedural question regarding challenging the scope of the petitioner’s reply, which the Board resolved by creating what appears to be a new procedure. IPR2013-00638, Paper 31
PTAB orders discovery of law firm invoices without reaching the question of waiver
In GEA Process Engineering, Inc. v. Steuben Foods, Inc., the PTAB ordered Petitioner to produce invoices from its counsel, based on Patent Owner’s argument that related entities represented by Petitioner’s counsel in the related district court litigation were real-parties-in-interest
“Speaking objections” improper and could result in exclusion of testimony
In Medtronic Inc. v. Troy R. Norred, the PTAB warned that “speaking objections” interposed by Patent Owner’s counsel during deposition of Patent Owner’s expert were improper under the Office Patent Trial Practice Guide, and that further violations of the