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PTAB Denies Discovery on Chipsets Purportedly Related to Proper Interpretation of Reference

PTAB Denies Discovery on Chipsets Purportedly Related to Proper Interpretation of Reference

by Geoffrey Gavin | Aug 15, 2017 | Evidentiary Issues

By Geoffrey Gavin In Semiconductor Components Industries, LLC v. Power Integrations, IPR2016-00809, Paper 65 (PTAB Aug. 4, 2017), the PTAB denied the patent owner’s request for authorization to serve requests for production seeking documents and things related to...
PTAB Denies Timely, Relevant Supplement to Petition

PTAB Denies Timely, Relevant Supplement to Petition

by John Marlott | Jun 20, 2017 | Evidentiary Issues, PTAB Trial Basics

By Christian Damon and John Marlott By rule, a petitioner may request permission from the Board to submit supplemental information in an IPR proceeding if: (1) the request is filed within one month of the Board’s institution decision, and (2) the supplemental...
Unmet Garmin Factor 3 Proves Fatal for Additional Discovery Request

Unmet Garmin Factor 3 Proves Fatal for Additional Discovery Request

by Matthew Johnson | May 26, 2017 | Evidentiary Issues

By Emily Lamm and Matt Johnson In Polygroup Ltd. v. Willis Electric Co., Ltd., the Patent Trial and Appeal Board denied a Patent Owner request for documents already provided in a co-pending lawsuit but restricted from use by a protective order. IPR2016-01610, Paper...
Beware Of Relying on Your Confidential Information

Beware Of Relying on Your Confidential Information

by David Maiorana | Apr 11, 2017 | Evidentiary Issues

By Dave Maiorana If you are involved in an IPR and you are contemplating whether to rely on your own confidential information as part of a filing, you need to consider the risk that the Board will deny your motion to file under seal because it relied on that...
Secondary Considerations Unsuccessful Once Again

Secondary Considerations Unsuccessful Once Again

by David Maiorana | Mar 1, 2017 | Evidentiary Issues, Federal Circuit Appeal

By Dave Maiorana As reported in our February 1, 2017 post, patent owners have had a difficult time convincing the PTAB that secondary considerations are sufficient to overcome a prima facie case of obviousness.  The Crown Packaging decision, highlighted in that post,...
Old Drug Label Still Requires Authentication of Publication Date

Old Drug Label Still Requires Authentication of Publication Date

by Cary Miller | Feb 17, 2017 | Evidentiary Issues, Trial Institution

By Lin Yu, Ph.D. and Cary Miller, Ph.D. In IPR2016-01566 (Mylan Pharmaceuticals Inc. v. Boehringer Ingelheim International GMBH), the PTAB denied institution of an inter partes review of U.S. Patent No. 9,173,859, in part, because Petitioner –Mylan – failed to provide...
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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.