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...
by Matthew Johnson | Jan 21, 2020 | Evidentiary Issues, Petitions, PTAB News
By Alex Li and Matt Johnson – A petition to institute an inter partes review (IPR) can only be filed on the basis of prior art consisting of patents and printed publications. But what makes a reference a “printed publication”? On December 20, 2019, the...
by John Marlott | Dec 3, 2019 | Evidentiary Issues, Motions Practice
By John Marlott – While PTAB proceedings are ordinarily decided “on the papers,” in certain rare cases the Board will permit live witness testimony at the oral hearing. The Board’s precedential decision in K-40 v. Escort explains that “[t]he Board does not...
by Carl Kukkonen | Jul 22, 2019 | Evidentiary Issues, PTAB News
By Carl Kukkonen The PTAB panel in Focal Therapeutics, Inc. v. SenoRx, Inc., Case IPR2014-00116 (PTAB July 21, 2014) (Paper 19), provided certain clarifications with regard to the ability to confer with witnesses during examination. This clarification was in response...
