PTAB Issues Guidelines on Foreign Language Testimony

by Tom Engellenner
The new AIA post grant proceedings not only authorize depositions but also make provisions for deposing witnesses in a foreign language. Similar to rules that have governed foreign language depositions in PTO interference proceedings (37 C.F.R. 41.157(d)), the new AIA rules for inter partes review, post grant review and covered business method review (37 C.F.R. 42.53(d)) require that “[i]f an interpreter will be used during the deposition, the party calling the witness must initiate a conference with the Board at least five business days before the deposition.” Beyond that the rules provide little guidance as to how the foreign language deposition is conducted.

Recently, in Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, a PTAB panel was asked to confirm that the further guidance that has evolved in interference practice should be followed. Specifically, Isis asked the PTAB to adopt the guidelines set forth in Interference No. 104,539, Paper 54. In an order issued August 7, 2013 (IPR2012-00022, Paper 55), Judge Green did just that and set out twelve specific guidelines: Continue reading “PTAB Issues Guidelines on Foreign Language Testimony”

Are Peace and Love Breaking Out at the PTAB? – (Settlement of IPR Proceedings: Part 2)

By Tom Engellenner

The proverbial ink had barely dried on our first posting on this topic (noting that few parties in Inter Partes Review (IPR) proceedings had taken advantage of the settlement option) when we saw an outbreak of judgments terminating proceedings by mutual consent.  It seems that parties are indeed availing themselves of the provisions of the AIA that allow terminations without findings when they reach a settlement agreement.

On July 22, 2013, the PTAB terminated eighteen different IPR proceedings involving Oracle Corporation and Clouding IP, LLC.  Continue reading “Are Peace and Love Breaking Out at the PTAB? – (Settlement of IPR Proceedings: Part 2)”

Protecting Confidential Information at the PTAB – Part 2

By Ben Snitkoff 

As discussed in Part 1, unlike in reexaminations, in an inter partes review, a protective order is available to parties seeking to keep their confidential information sealed from public view.

Despite the availability and relative ease of putting a protective order in place, relatively few parties have chosen to do so. In seventy-seven of the inter partes reviews instituted since the beginning of 2013 to date (based on petitions filed between September and December 2012) the parties have moved to seal documents in only six cases. Regardless, the parties to a proceeding should agree to a protective order early-on, so that an agreed-to protective order will be available if and when it is needed.

Continue reading “Protecting Confidential Information at the PTAB – Part 2”