Tag Archives: petitioner reply

Patent Owners Can Get the Last Word in IPR

iStock_000065890947_SmallPTAB judges continually impress me with their scrupulous fairness. I noticed it every day of my service as an administrative patent judge and every day since. Here’s a great example of that careful attention.

The party with the burden of proof argues last, right? Well, mostly right. In IPR’s (and PGR’s and CBM’s), the Petitioner bears the ultimate burden to prove a proposition of unpatentability by a preponderance of the evidence.… More

Motion for Observations: A Late Game-Changer

Antique hourglass, black sand, textured background. Right of image, blank space on left, landscape, top half almost empty.

Often overlooked due to its late timing and limited scope, the Motion for Observations provides a mechanism for introducing dispositive evidence when there’s little further the opponent can do about it.

The motion is limited to addressing cross-examination testimony of the opponent’s reply witnesses.  There are normally at most two substantive Replies in a proceeding: the Petitioner’s Reply in support of the Petition,… More

The Patent Owner Calls the Shots in Trial

The Patent Owner calls the shotsPetitioners often view the Petition as an opening salvo in what they expect will be a back-and-forth process.  In reality, the Petitioner loses control of the proceeding after the Petition is filed.  Once trial is instituted, the Patent Owner calls the shots.  For example:

  • The Patent Owner decides what new witness testimony to introduce and thereby limits the scope of the Petitioner’s discovery.
  • The Patent Owner decides what issues to raise in the Response and thereby limits the scope of the Petitioner’s Reply.…
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