by David Maiorana | May 11, 2021 | Discovery, Evidentiary Issues
By Dave Maiorana and Bobby Karl – Discovery in an IPR proceeding is limited compared to district court litigation in order to focus the proceedings and promote speed and efficiency. The PTAB Practice Guide and 37 C.F.R 42.51 provide for three types of...
by Matthew Johnson | Mar 23, 2021 | Discovery, PTAB News
By Alex Li and Matt Johnson – Depositions for proceedings before the Patent Trial and Appeal Board (PTAB) are usually taken in the U.S. See 37 C.F.R. § 42.53(b)(2), (b)(3). Furthermore, many foreign jurisdictions have restrictions on taking depositions within...
by Matthew Johnson | Jan 24, 2020 | Discovery, Expert Witnesses
By Marlee Hartenstein and Matt Johnson – In a series of IPR proceedings between Petitioner Adobe Inc. and Patent Owner RAH Color Technologies LLC, the Patent Trial and Appeal Board declined to extend attorney work product protection to deposition questions...
by Matthew Johnson | Aug 6, 2019 | Discovery, Motions Practice
By Jen Bachorik and Matt Johnson In a recent appeal of two inter partes review (“IPR”) decisions from the Patent Trial and Appeal Board (“Board”), The Court of Appeals for the Federal Circuit (“CAFC”) held that the Board abused its discretion in denying VirnetX’s...
by Matthew Johnson | Jul 25, 2019 | Amendment Practice, Discovery, Joinder, Motions Practice, PTAB News
By Catharina Chin Eng and Matt Johnson Our prior post on the PTAB’s second update to the AIA Trial Practice Guide (TPG), published July 15, 2019, highlighted the additional guidance provided for petitions, patent owner preliminary responses and claim construction. ...
by Marc S. Blackman | Jul 9, 2019 | Discovery, PTAB News
By Marc S. Blackman The PTAB recently granted a Patent Owner’s motion to take additional discovery of Petitioner’s expert. In particular, the PTAB ordered Petitioner’s expert to produce documents that identify materials he reviewed in preparing his declaration. ...
