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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....
PTAB Strikes Patent Owner Sur-Reply Exhibits

PTAB Strikes Patent Owner Sur-Reply Exhibits

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...
Motion to Exclude Improper Vehicle For Addressing Non-Responsive Evidence

Motion to Exclude Improper Vehicle For Addressing Non-Responsive Evidence

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...
In Your Dreams – Additional PTAB Discovery Remains Elusive

In Your Dreams – Additional PTAB Discovery Remains Elusive

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...
BREAKING: PTAB Publishes Final Rule Package

BREAKING: PTAB Publishes Final Rule Package

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...
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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.