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Board Discretion

PTAB / Board Discretion

PTAB Institutes Review On Previously-Cited Prior Art

This week the PTAB rejected a Patent Owner’s request that the Board deny institution of inter partes review where the relied upon prior art was cited on the face of the challenged patent. Patent Owners routinely ask the Board to exercise its discretion under 35 U.S.C. Sections 314(a) and 325(d) to deny institution. In Adobe […]

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PTAB / Board Discretion / Discovery

PTAB deposition rules permit conferring with a witness after cross-examination

The PTAB recently designated as precedential an order clarifying when counsel may confer with a witness during a deposition. The Testimony Guidelines state: Once the cross-examination of a witness has commenced, and until cross-examination of the witness has concluded, counsel offering the witness on direct examination shall not: (a) consult or confer with the witness […]

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PTAB / Board Discretion

Joining an earlier IPR proceeding may impact your ability to file another IPR

In IPR2018-00347, the Board exercised its discretion and denied institution of Honda’s petition against U.S. Patent No. 7,154,200, assigned to Intellectual Ventures. The Board applied the seven, non-exhaustive factors set out in General Plastics (IPR2016-01357; PTAB May 4, 2016) and was ultimately “swayed” by the 1st and 3rd factors, finding that Honda “chose to file two […]

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