Ross Viguet (US)

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PTAB denies motion seeking cross-examination of inventor, finding that patent specification is not “affidavit testimony”

By Ross Viguet (US) on June 22, 2015 Posted in Discovery

In Westlake Services, LLC v Credit Acceptance Corp., Petitioner was denied authorization to file a motion to compel the deposition testimony of the named inventor for the patent under review. CBM2014-00176, Paper 29 (May 18, 2015). Although Patent Owner had not submitted testimony evidence from the inventor in the form of an affidavit or declaration, … Continue reading

PTAB clarifies what qualifies as “new” testimony in a Preliminary Response

By Ross Viguet (US) on February 18, 2015 Posted in Discovery, Institution decisions

In B/E Aerospace, Inc. v MAG Aerospace Industries, LLC, the PTAB decided that testimonial evidence submitted in the Patent Owner’s Preliminary Response, which was created for related litigation, was “new” testimonial evidence under 37 C.F.R. § 42.107(c). IPR2014-01510, Paper 13 (Jan. 20, 2015). Thus, the Board ordered that the testimony and any associated arguments in … Continue reading

PTAB authorizes petitioner’s reply to preliminary response

By Ross Viguet (US) on December 15, 2014 Posted in General

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). 35 U.S.C. § 313 provides that, if an IPR Petition is filed under 35 U.S.C. 311, the Patent … Continue reading

PTAB orders discovery of law firm invoices without reaching the question of waiver

By Ross Viguet (US) on October 29, 2014 Posted in Discovery

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 (RPIs) in the IPR proceedings. IPR2014-00041, Paper 90 (September 12, 2014) (available in redacted form as … Continue reading

No getting clever with page limits: PTAB denies IPR petition citing primarily to expert declaration

By Ross Viguet (US) on September 18, 2014 Posted in Institution decisions

In Fidelity Nat’l Info. Serv., Inc. v. Datatreasury Corp., the Patent Trial and Appeal Board (PTAB) denied an IPR Petition that cited primarily to an expert declaration as failing to contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence” as required under 37 … Continue reading