News & Analysis as of

Expert Witness Expert Testimony Intellectual Property Litigation

McGuireWoods LLP

Perfecting Expert Testimony at PTAB

McGuireWoods LLP on

Expert testimony plays a critical role in Patent Trial and Appeal Board (PTAB) proceedings at the U.S. Patent and Trademark Office (USPTO). Thousands of petitions for inter partes review (IPR) and post grant review have been...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights: January 2022 - Federal Circuit Holds that Your Technical Expert Must be a POSA

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held in a precedential opinion that expert witnesses must at least have ordinary skill in the art. Because Kyocera’s expert did not...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights: January 2022 - Does the Limit Exist?: Negative Limitations in Novartis v. Accord

In an appeal, Novartis Pharmaceuticals v. Accord Healthcare, Inc., the issue of whether a patent provides sufficient written description of a negative limitation split the panel at the Federal Circuit. Novartis...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights: January 2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Akerman LLP - Marks, Works & Secrets

Suggestive or Descriptive Marks: An “Expert’s” View

On February 28, 2015, the Southern District of New York denied a motion to exclude the testimony and survey of an expert witness regarding whether a trademark was descriptive or suggestive. In Rise-N-Shine, LLC v. Robin...more

McDermott Will & Emery

Declarant Must Be Made Available for Deposition in the United States - Square, Inc. v. REM Holdings 3, LLC

McDermott Will & Emery on

Addressing the location of a deposition of patent owner’s declarant, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) concluded that, absent an agreement between the parties to...more

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