Expert Testimony, Litigation Strategies, Patent Trial and Appeal Board

Discretionary Denials at the PTAB: Strategic Insights for Petitioners and Patent Owners in a Shifting Landscape

Baker Botts L.L.P. on 7/8/2025

A set of recently issued memoranda by United States Patent and Trademark Office (“USPTO”) officials has re-energized the debate around discretionary denials in post-grant trials at the Patent Trial and Appeal Board (“PTAB”)....more

Patent Owner Tip #7 for Surviving an Instituted IPR: Work with Your Expert to Make the Declaration Navigable and Well Supported

Mintz - Intellectual Property Viewpoints on 5/21/2021

Expert declarations are an essential component of any patent owner’s effort to survive an instituted inter partes review (“IPR”). The Board relies heavily on expert testimony in order to evaluate and understand the technology...more

Tip #4 for Avoiding IPR Institution: Don’t Argue Facts

Mintz - Intellectual Property Viewpoints on 11/9/2020

We’ve previously written that the best defense to an IPR challenge is avoiding IPR institution altogether. In addition to the other tips discussed in this series of posts, another strategy for avoiding institution is focusing...more

FanDuel Learns the Hard Way: An IPR Challenge to Any Patent Claim May be Lost if Not Comprehensive and Rigorous Enough

Sunstein LLP on 9/1/2020

As we demonstrated in our own successful appeal, Arendi S.A.R.L. v. Apple Inc. (Fed. Cir. 2016), a petition for inter partes review (“IPR”) may fail when an expert declaration lacks detailed explanation. An expert’s...more

Anticipation by Combining Elements from the Four Corners of a Reference

Jones Day on 4/2/2018

In a January 12 article, Anticipation Requires More Than A Reference That Discloses All The Elements, we discussed the Microsoft Corp v. Biscotti, Inc. case, where the Federal Circuit affirmed a decision of the PTAB finding...more

Expert Testimony › Litigation Strategies › Patent Trial and Appeal Board

Discretionary Denials at the PTAB: Strategic Insights for Petitioners and Patent Owners in a Shifting Landscape

Patent Owner Tip #7 for Surviving an Instituted IPR: Work with Your Expert to Make the Declaration Navigable and Well Supported

Tip #4 for Avoiding IPR Institution: Don’t Argue Facts

FanDuel Learns the Hard Way: An IPR Challenge to Any Patent Claim May be Lost if Not Comprehensive and Rigorous Enough

Anticipation by Combining Elements from the Four Corners of a Reference

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