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 | Dec 8, 2020 | Evidentiary Issues, Expert Witnesses, PTAB News
By Matt Johnson – On December 8th, the PTAB published a Final Rule, formalizing a number of PTAB practices dictated by case law and described in the current Trial Practice Guide. The one substantive change of note is the removal to deference to the...
by Matthew Johnson | Nov 30, 2020 | Evidentiary Issues
By J. Sean Benevento*, Mike Lavine, and Matt Johnson – In a recent precedential decision, the PTAB emphasized that objective indicia of nonobviousness must have a nexus to the claimed invention. Lectrosonics, Inc. v. Zaxcom, Inc., No. IPR2018-01129, Paper 33...
by Marc S. Blackman | Sep 8, 2020 | Evidentiary Issues
By Marc Blackman – An IPR petitioner that relies on foreign language prior art must submit an English language translation of the reference along with an affidavit attesting to the accuracy of the translation. In a recent IPR proceeding, a petitioner’s reliance...
by Matthew Johnson | Jun 12, 2020 | Evidentiary Issues, Preliminary Responses, PTAB News
By Alex Li and Matt Johnson – On June 11, 2020, the Patent Trial and Appeal Board (PTAB) held a Boardside Chat webinar to discuss new developments in AIA trials. The discussion featured panelists Vice Chief Judge Michael Tierney and Lead Judge William Saindon....
by Matthew Johnson | Jun 2, 2020 | Evidentiary Issues, PTAB News, PTAB Trial Basics, Trial Institution
By Christian Roberts* and Matt Johnson – On May 27, 2020, the USPTO announced a notice of proposed rulemaking that would affect IPR, PGR and CBM proceedings. Most significantly, the proposed rules would eliminate the presumption in favor of petitioners for...
