Introducing Evidence Before Authorization May Result in Expungement
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. Youngstrom,...
Late Request Results In Denial Of Motion To Strike Authorization
By Hannah Mehrle and Matt Johnson - Patent Owner (Provisur Technologies) requested authorization to file a motion to strike portions of Petitioner’s (Weber, Inc.) Reply and certain evidence submitted therewith, which Petitioner opposed. Patent Owner argued that parts...
Kathi Vidal Nominated for USPTO Director
By Mike Lavine and Matt Johnson - On October 26, 2021, President Biden nominated Kathi Vidal – the managing partner of Winston and Strawn’s Silicon Valley office – as Director of the United States Patent and Trademark Office (USPTO). Ms. Vidal is considered to be...
PTAB Strikes Patent Owner Sur-Reply Exhibits
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 witness." In...
PTAB Permits Incorporation by Reference in Expert Declaration
By Alex Li and Josh Nightingale - The first step in requesting an inter partes review (IPR) of a granted patent is the filing of a petition before the Patent Trial and Appeal Board (PTAB), in which the petitioner states the grounds for the invalidity of the patent. ...