by Marc S. Blackman | Nov 15, 2018 | Discovery, PTAB Trial Basics
By Marc Blackman Discovery is limited in inter partes review proceedings. As we previously discussed here and here, discovery is available only “in the interest of justice,” and requests for discovery frequently are denied. Yet, a party may be aware of information...
by Emily Tait | Nov 8, 2018 | Other News, PTAB Trial Basics
By: Emily Tait UPDATE: Oral Argument was held in this case in February 2019. On October 26, 2018, the Supreme Court granted certiorari in Return Mail, Inc. v. United States Postal Service, et al. (17-1594) to address whether the U.S. government is a “person” who may...
by Doug Pearson | Oct 31, 2018 | Pharmaceutical, PTAB News, PTAB Trial Basics
By Doug Pearson Prior to the USPTO’s issuance of revised Standard Operating Procedure (SOP) 2 on September 20, 2018 (available here), designation of Board decisions as Precedential or Informative required, among other things, nomination of a decision to the Chief...
by Matthew Johnson | Oct 30, 2018 | Pharmaceutical, PTAB News, PTAB Trial Basics
By Josh Nightingale and Matt Johnson The USPTO has revised its standard operating procedure (SOP) governing the assignment of judges to panels in Patent Trial and Appeal Board (PTAB) cases. The SOP, available here, provides guidance to Board administrative personnel...
by Tim Heverin | Oct 23, 2018 | PTAB Trial Basics
By Tim Heverin Finjan, Inc. v. Cisco Systems, Inc., Case No. 17-cv-00072-BLF (N.D. Cal. Sept. 13, 2018), reminds us that representations to the PTAB can have consequences in district court litigation, even outside the estoppel context. In the patent infringement...
by Matthew Johnson | Oct 19, 2018 | Discovery, PTAB Trial Basics
By Sue Gerber and Matt Johnson The PTAB has discretion to permit “routine discovery” under 37 C.F.R. §42.51(b)(1)(iii) when that discovery “is narrowly directed to specific information known to the responding party to be inconsistent with a position advanced by that...
