by Matthew Johnson | Nov 22, 2021 | Evidentiary Issues
By Paxton Lozano* and Matt Johnson – In an inter partes review (IPR), the scope of discovery is expressly stated in the C.F.R. and additional discovery must either be agreed upon by the parties or granted by the Board when it “is necessary in the interest of...
by Joe Sauer | Nov 15, 2021 | Evidentiary Issues, Final Written Decisions, Trial Institution
By Stephanie Mishaga, Joseph Sauer, and Evan McLean – It is no secret that the Patent Trial and Appeal Board (PTAB) often leverages its discretionary denial powers to deny inter parties review (IPR) petitions. The PTAB has discretionarily denied IPR petitions,...
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 …...
by Matthew Johnson | Nov 10, 2021 | Evidentiary Issues, Motions Practice
By Christian Roberts and Matt Johnson – Introducing evidence in a motion to file a reply to a patent owner’s preliminary response without the PTAB’s authorization may result in denial and expungement. A recent motion met such a fate in Ice Castles, LLC v....
by Matthew Johnson | Nov 4, 2021 | Evidentiary Issues
By John Wright* and Matt Johnson – Rule 42.23(b) is clear, “A sur-reply may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply...
by David Maiorana | Sep 23, 2021 | Evidentiary Issues, Motions Practice
By Lisa Furby and Dave Maiorana – In Apple, Inc. v. Parus Holdings, Inc. (IPR2020-00686), the PTAB denied the Patent Owner’s motion to exclude portions of the Petitioner’s supplemental expert declaration. Here the Patent Owner sought to exclude a number of...
