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PGR Estoppel Continues to be Broad and Onerous

PGR Estoppel Continues to be Broad and Onerous

by Josh Nightingale | Mar 24, 2022 | Estoppel, PGR

By Hannah Mehrle and Josh Nightingale – An ITC Administrative Law Judge (ALJ) recently issued an initial determination holding that PGR estoppel prevented GMG Products LLC (Respondent) from raising two prior-art products in the ITC.  Under Section 325(e)(2) of...
Discovery Request Seeking Deposition Preparation Materials Denied

Discovery Request Seeking Deposition Preparation Materials Denied

by Josh Nightingale | Jan 24, 2022 | Discovery, Motions Practice

By Christian Roberts and Josh Nightingale – 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...
Hirschfeld Issues Second Post-Arthrex Grant of Director Review

Hirschfeld Issues Second Post-Arthrex Grant of Director Review

by Josh Nightingale | Dec 17, 2021 | PTAB News

By Evan Jones* and Josh Nightingale – On November 18, 2021, the Commissioner for Patents and acting Director of the USPTO, Andrew Hirshfeld, issued the second order granting a Petition for Director Review since the interim Director Review process was implemented...
Deposition Exhibits Allowed With Sur-Replies (Sometimes)

Deposition Exhibits Allowed With Sur-Replies (Sometimes)

by Josh Nightingale | Nov 15, 2021 | Evidentiary Issues

By Grant Hebrank and Josh Nightingale – Under the Board’s rules, a patent owner gets to have the last word in a PTAB proceeding by filing a sur-reply to the petitioner’s reply.  Sur-replies may only respond to arguments raised in the reply, and the “sur-reply …...
PTAB Permits Incorporation by Reference in Expert Declaration

PTAB Permits Incorporation by Reference in Expert Declaration

by Josh Nightingale | Nov 3, 2021 | Petitions

By Alex Li and Josh Nightingale – 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...
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    The opinions expressed are those of the authors and do not necessarily reflect the views of Jones Day or its clients. The posts and information provided are for general information purposes and are not intended to be and should not be taken as legal advice.