Limited Experiment Protocol Discovery Granted
By Paxton Lozano* and Matt Johnson - In an inter partes review (IPR), the scope of discovery is expressly stated in the C.F.R. and additional discovery must either be agreed upon by the parties or granted by the Board when it “is necessary in the interest of justice.”...
PTAB Denies IPR Institutions Without Patent Owner Rebuttal Evidence
By Stephanie Mishaga, Joseph Sauer, and Evan McLean - It is no secret that the Patent Trial and Appeal Board (PTAB) often leverages its discretionary denial powers to deny inter parties review (IPR) petitions. The PTAB has discretionarily denied IPR petitions, for...
Deposition Exhibits Allowed With Sur-Replies (Sometimes)
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 … may...
PTAB Lifts Arthrex Remand Stay
By Evan Jones* and Matt Johnson - On October 26, 2021, Chief Administrative Patent Judge (“APJ”) Boalick lifted a May 1, 2020 stay issued by the PTAB pending the Supreme Court’s consideration of Arthrex in which 103 cases were placed in “administrative abeyance.” The...
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,...