Deposition Exhibits Allowed With Sur-Replies (Sometimes)
By Grant Hebrank and Josh Nightingale - Under the Board’s rules, a patent owner gets to have the last word in a PTAB proceeding by filing a sur-reply to the petitioner’s reply. Sur-replies may only respond to arguments raised in the reply, and the “sur-reply … may...
PTAB Lifts Arthrex Remand Stay
By Evan Jones* and Matt Johnson - On October 26, 2021, Chief Administrative Patent Judge (“APJ”) Boalick lifted a May 1, 2020 stay issued by the PTAB pending the Supreme Court’s consideration of Arthrex in which 103 cases were placed in “administrative abeyance.” The...
Introducing Evidence Before Authorization May Result in Expungement
By Christian Roberts and Matt Johnson - Introducing evidence in a motion to file a reply to a patent owner’s preliminary response without the PTAB’s authorization may result in denial and expungement. A recent motion met such a fate in Ice Castles, LLC v. Youngstrom,...
Late Request Results In Denial Of Motion To Strike Authorization
By Hannah Mehrle and Matt Johnson - Patent Owner (Provisur Technologies) requested authorization to file a motion to strike portions of Petitioner’s (Weber, Inc.) Reply and certain evidence submitted therewith, which Petitioner opposed. Patent Owner argued that parts...
Kathi Vidal Nominated for USPTO Director
By Mike Lavine and Matt Johnson - On October 26, 2021, President Biden nominated Kathi Vidal – the managing partner of Winston and Strawn’s Silicon Valley office – as Director of the United States Patent and Trademark Office (USPTO). Ms. Vidal is considered to be...