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In Your Dreams – Additional PTAB Discovery Remains Elusive

In Your Dreams – Additional PTAB Discovery Remains Elusive

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...
Creative COVID-Time Deposition Procedure

Creative COVID-Time Deposition Procedure

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...
A Compelling Decision – Board Addresses Scope Of Work Product Protection

A Compelling Decision – Board Addresses Scope Of Work Product Protection

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...
PTAB Abused Discretion in Denying Request to File Motion for Additional Discovery

PTAB Abused Discretion in Denying Request to File Motion for Additional Discovery

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...
Trial Practice Guide Updates – Discovery, Testimony, Motions to Amend, and Joinder

Trial Practice Guide Updates – Discovery, Testimony, Motions to Amend, and Joinder

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. ...
PTAB Orders Petitioner’s Expert to Produce Discovery

PTAB Orders Petitioner’s Expert to Produce Discovery

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. ...
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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.