Page 2 - Trial Practice Guide News Today

In Intuitive Surgical, Inc. v. Ethicon LLC, the U.S. Court of Appeals for the Federal Circuit recently affirmed that estoppel under 35 U.S.C. § 315(e)(1) can apply as between...

In 2021, Fintiv continued to be one of the hottest and most controversial issues facing the patent bar. The USPTO Patent Trial and Appeal Board’s (PTAB) precedential Fintiv decision...

Ken Korea, principal at Colev Law and former head of Silicon Valley IP at Samsung, delves into the history and future of the Patent Trial and Appeal Board

FORUM SELECTION CLAUSES MAY OR MAY NOT PRECLUDE PTAB REVIEW - In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc., No. 21-1638 (Fed. C...

In a series of related inter partes review proceedings, the Patent Trial and Appeal Board recently granted a petitioner’s motion to strike the sworn affidavit of a witness who was...

After the PTAB instituted review, the patent owner submitted a sworn affidavit from the named author of the 1984 article to clarify what the article was meant to report.

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...

[co-author: Ashvi Patel*] In Fantasia Trading LLC v. Cognipower LLC, IPR2021-00070, Paper 21 (May 20, 2021), the Patent Trial and Appeal Board (PTAB) declined to institute The PTAB has the authority to determine whether to institute an IPR, including whether to consider more than one petition directed to a challenged patent. The Trial Practice Guide sets the standard for petitioners that file more than one petition challenging the same patent. Petitioner must file (1) a ranking of the petit...

Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. There are three...

If you anticipate needing additional discovery during an IPR proceeding, it is crucial to move as soon as possible, as timing is one of the factors the Board considers when determining whether to authorize the filing of a motion for additional discovery.