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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...
Healthy Overlap Between PTAB And Trial Court Favors Denial

Healthy Overlap Between PTAB And Trial Court Favors Denial

by Matthew Johnson | May 13, 2022 | PTAB News, PTAB Trial Basics

By Haytham Soliman and Matt Johnson – The PTAB recently denied institution of inter partes review (IPR) for claims 1 and 46 of U.S. 7,464,040 in eClinicalWorks, LLC et al. v. Decapolis Systems, LLC, IPR2022-0229, Paper 10 (PTAB April 13, 2022).  The denial was...
Petition Survives Word Count Complaint And Request for Withdrawal

Petition Survives Word Count Complaint And Request for Withdrawal

by Matthew Johnson | Apr 1, 2022 | PTAB Trial Basics, Trial Institution

By Akosua Kyereme-Tuah, Mike Lavine, and Matt Johnson – The PTAB recently denied a motion to dismiss a Revised Petition and terminate an inter partes review (IPR) proceeding despite Petitioner’s alleged withdrawal of the Original Petition and failure to comply...
Down to the Wire: POP Finds Petition Payment Timely

Down to the Wire: POP Finds Petition Payment Timely

by Albert Liou | Jan 27, 2022 | PTAB News, PTAB Trial Basics

By Albert Liou – On January 14, 2022, the PTAB issued a precedential opinion granting a request for rehearing of a denial of an IPR petition that had previously found a petition to be time-barred because the wire transfer had not been timely paid.  Toshiba...
Board Requires Settlement Agreement to Dismiss Pre-Institution Proceeding

Board Requires Settlement Agreement to Dismiss Pre-Institution Proceeding

by Matthew Johnson | Jan 11, 2022 | PTAB Trial Basics

By Hannah Mehrle and Matt Johnson – Biofrontera AG (“Petitioner”) filed an unopposed motion to dismiss the petition during the preliminary phase of the proceedings.  Here, DUSA Pharmaceuticals, Inc. (“Patent Owner”) had not yet filed a Preliminary Response, and...
PTAB Denies One of Multiple Petitions, Leaving Claims Unchallenged

PTAB Denies One of Multiple Petitions, Leaving Claims Unchallenged

by Carl Kukkonen | Jan 4, 2022 | PTAB Trial Basics, Trial Institution

By Carl Kukkonen – On December 14, 2021, the PTAB instituted Post-Grant Review (PGR) for certain claims of U.S. Pat. No. 10,855,671 (the ‘671 Patent) in Netskope, Inc. v. Bitglass, Inc., PGR2021-00091 while, on the same date, denying institution of a PGR for...
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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.