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Analysis of USPTO post-issuance proceedings

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New PTAB Rules Take Effect May 2, 2016

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By Talbot Hansum (US) & Andrew Liddell (US) on April 28, 2016

The Patent Office has published a final rule with amendments to 37 CFR § 42, et seq., governing IPR, CBM, PGR, and derivation proceedings before the Patent Trial and Appeal Board. The new rules take effect Monday, May 2,…

Refused Cross-Examination Results in PTAB Striking Non-Party Witness Declaration

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By George Jordan (US) on December 9, 2015

In HTC Corp. v. NFC Tech., LLC, the PTAB granted the Petitioner’s motion to strike and expunge the declaration of the Patent Owner’s non-party witness, who refused to submit to cross-examination. IPR2014-01198, Paper 41 (Nov. 6, 2015).

The…

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

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By Ross Viguet (US) on June 22, 2015

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…

PTAB allows submission of video deposition testimony as part of Patent Owner Response

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By Allan Braxdale (US) on March 22, 2015

In Pacific Market Int’l v. Ignite USA, LLC, the PTAB authorized submission of six videos as exhibits along with the Patent Owner Response. IPR2014-00561, Paper 27 (Feb. 5, 2015).

37 C.F.R. § 42.53(a) states that “[u]ncompelled direct testimony…

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

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By Ross Viguet (US) on February 18, 2015

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…

PTAB denies patent owner’s request for additional third party discovery

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By James Crawford (US) on January 26, 2015

In Alternative Legal Solutions, Inc. v. Employment Law Compliance, Inc., the PTAB denied the Patent Owner’s motion for authorization to compel third party testimony and production of documents regarding whether a reference qualified as a “printed publication,” finding that…

Do not delay in deposing declarants whose declarations have only been served but not yet filed

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By Wayne St. Hugh Livingstone (US) on November 20, 2014

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

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By Ross Viguet (US) on October 29, 2014

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

Photo of James Crawford (US)
By James Crawford (US) on October 27, 2014

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…

PTAB declines to compel deposition of declarant . . . but warns of consequences for not producing declarant for cross-examination

By NRF Digital Team on September 18, 2014

In Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., the Patent Trial and Appeal Board (PTAB) denied a patent owner’s request for additional discovery that sought the deposition of a declarant whose testimony was relied on by…

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Patent Challenges provides reports, updates, commentary and insight on new decisions and other happenings related to post-issuance proceedings (IPR, PGR and CBM) at the Patent Trial and Appeal Board of the USPTO. Contributors are drawn from our deep roster of IP lawyers with experience in patent litigation, patent prosecution and post-issuance proceedings.

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