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The U.S. Patent and Trademark Office s Patent Trial and
Appeal Board (PTAB) recently grappled with the admission into
evidence of expert deposition testimony that was presumably harmful
to the petitioner in an
inter partes review
(IPR), and barred the testimony from coming into evidence.
In
Axonics Modulation Technologies, Inc. v. Medtronic, Inc.,
Cases IPR2020-00678, IPR2020-00680, IPR2020-00712, Paper 22 (April
9, 2021), the petitioner elected to depose patent owner s
expert, but then declined to submit the transcript as an exhibit to
the petitioner reply. The patent owner then attempted to
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The PTAB’s denial of Apple’s attempt to join Microsoft’s IPR suggests increased hurdles for copycat petitions.
TAKEAWAYS
Serial petitions will be heavily scrutinized and often denied using the General Plastic factors, even when the second petition seeks to join a previously instituted trial.
The PTO is considering promulgating rules governing discretionary denials, and sought public comments for such rules, (85 Reg. 66502) which were due on Dec. 3, 2020, published
The PTAB may use its discretion to deny “me-too” or “copycat” petitions seeking joinder in an already instituted proceeding by considering the General Plastic factors.