Rather than resist preliminary-stage discovery, Petitioners instead should say “Bring it on!”
As I suggested in an earlier post, Patent Owners’ ability to introduce new declaration evidence with a preliminary response is unlikely to help them avoid trial. I doubt the Board will deny a Petitioner the relief requested on the untested evidence of a Patent Owner witness, however persuasive that evidence may appear.… More
Tag Archives: preliminary response
Giving the Petition a Bad Haircut
The IPR Petition page limit is easy to remember—60 pages, right? Not exactly. In Shenzhen Huiding Tech. Co. Ltd. v. Synaptics Inc., IPR2015-01739 (Paper 8), the PTAB stopped reading the Petition at page 50 and denied all the challenges laid out in the final 10 pages. Talk about a bad haircut!
How did this happen? The Patent Owner used its Preliminary Response to point out that the Petitioner had effectively blown through the page limit by incorporating other documents along the way.… More
IPR filing receipts can take a month to issue
In the early days of AIA trials, the PTAB was able to issue filing notices less than a week after petition filing. But paralegal resources now are stretched due to the need to process a full slate of institution decisions, interlocutory decisions, and final decisions on an IPR docket four-to-five times larger than projected. As a result, lately it is taking almost a month to issue those notices. … More
Declarations Won’t Help Patent Owners in the Preliminary Response, but Depositions Might
There has been much discussion about whether Patent Owners should have the right to submit new testimonial evidence with the preliminary response. The patent office has officially proposed just such a rule and is considering public comments as part of the rulemaking process (update: the new rules are here and authorize preliminary declarations). Patent Owners may, in theory,… More