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“Voluntary Interrogatory Responses” Excluded As Inadmissible Hearsay

“Voluntary Interrogatory Responses” Excluded As Inadmissible Hearsay

by Matthew Johnson | Aug 23, 2022 | Evidentiary Issues, PTAB News, PTAB Trial Basics

By Sue Gerber and Matt Johnson – While creativity has its place in advocacy, it can be taken too far.  The Petitioner learned this lesson the hard way in Unified Patents Inc. v. American Patents LLC, IPR2019-00482, Paper 132 (P.T.A.B. Aug. 3, 2022).  In this...
Library Indexing Insufficient to Establish Public Accessibility

Library Indexing Insufficient to Establish Public Accessibility

by Carl Kukkonen | Aug 17, 2022 | Evidentiary Issues, PTAB News

By Carl Kukkonen – In Salesforce.com, Inc. v. WSOU Investments, LLC d/b/a Brazos Licensing and Development, the Board denied institution of inter partes review of a patent directed to providing content to a limited display terminal (e.g., a PDA) because...
Limited Experiment Protocol Discovery Granted

Limited Experiment Protocol Discovery Granted

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...
PTAB Denies IPR Institutions Without Patent Owner Rebuttal Evidence

PTAB Denies IPR Institutions Without Patent Owner Rebuttal Evidence

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,...
Deposition Exhibits Allowed With Sur-Replies (Sometimes)

Deposition Exhibits Allowed With Sur-Replies (Sometimes)

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 …...
Introducing Evidence Before Authorization May Result in Expungement

Introducing Evidence Before Authorization May Result in Expungement

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....
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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.