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Precedential PTAB Order Addresses Witness Examination

Precedential PTAB Order Addresses Witness Examination

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...
No Basis For Broad Exclusion Of Inventor Testimony

No Basis For Broad Exclusion Of Inventor Testimony

by Kenneth Luchesi | Jun 17, 2019 | Evidentiary Issues, Trial Institution

By Kenny Luchesi The Board has broad discretion to determine how much weight should be given to inventor testimony, but as long as the testimony does not relate to the inventor’s opinion about the meaning of a claim term, there is no basis for broadly excluding all...
Precedential Opinion Panel On Printed Publications

Precedential Opinion Panel On Printed Publications

by David Cochran | Apr 11, 2019 | Evidentiary Issues

By Dave Cochran Inter Partes review can only be based on prior art consisting of patents or printed publications.  35 USC 311(b).  Patents are easy to spot because they are issued by a governmental authority of some sort, but whether something is a “printed...
PTAB Webinar Addresses Hearsay and Authentication Issues

PTAB Webinar Addresses Hearsay and Authentication Issues

by Matthew Johnson | Dec 18, 2018 | Evidentiary Issues

By Jihong Lou, Levent Herguner, Alex Li, and Matt Johnson –  On December 6, 2018, the PTAB hosted a Boardside Chat webinar on hearsay and authentication. The Administrative Patent Judges presenting the webinar were Michael Zecher, Tom Giannetti, and Grace...
Post-Priority Document Usable As Evidence of POSITA Motivation

Post-Priority Document Usable As Evidence of POSITA Motivation

by Jennifer Chheda, Ph.D. | Oct 25, 2018 | Evidentiary Issues

By: Jennifer J. Chheda, Ph.D and John D. Kinton The Federal Circuit recently affirmed the Patent Trial and Appeal Board’s (“PTAB”) final written decisions finding the claims of Yeda Research and Development Co., Ltd.’s (“Yeda”) U.S. Patent Nos. 8,232,250, 8,399,413,...
PTAB Grants Rare Motion for Additional Discovery

PTAB Grants Rare Motion for Additional Discovery

by Gasper LaRosa | Aug 22, 2018 | Evidentiary Issues, Motions Practice, Pharmaceutical

By: Mital B. Patel and Gasper J. LaRosa The PTAB recently granted a rare motion for additional discovery into the question of whether an unnamed party, Amneal Pharmaceuticals, LLC (“Amneal”), should have been named as a real-party-in-interest.  In Kashiv LLC v. Purdue...
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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.