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Citation 37 C.F.R. §42.51

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11 firm's commentaries
  • U.S. Patent and Trademark Office Issues Proposed Rules for Post-Issuance Patent Review under the America Invents Act
    • United States
    • JD Supra United States
    • February 16, 2012
    ...§ 42.25). 21 See 77 Fed. Reg. 7060, 7066 (to be codified as 37 C.F.R. § 42.221). 22 See 77 Fed. Reg. 6879, 6887 (to be enacted as 37 C.F.R. § 42.51). 23 See id. at 6889 (to be enacted as 37 C.F.R. § 42.64). 24 See id. at 6890 (to be enacted as 37 C.F.R. § 42.70). U.S. Patent and Trademark O......
  • The PTAB Strikes Back -- Issues Order Prohibiting St. Regis Mohawk Tribe from Filing Any Additional Papers in IPR
    • United States
    • JD Supra United States
    • January 9, 2018
    ...that any further actions that demonstrate a disregard for our process will not be tolerated. See 37 C.F.R. § 42.12(b). Kevin E. Noonan 37 C.F.R. § 42.51, relates to discovery between the parties, not from the Board itself. As such, the Board can take shelter from the fact that its rules wer......
  • Discovery Motion Practice To Become More Commonplace At PTAB
    • United States
    • Mondaq United States
    • July 16, 2019
    ...before filing any motion, 37 C.F.R. § 42.20(b), they also expressly give a party authorization to move for additional discovery, 37 C.F.R. § 42.51(b)(2)(i). This provision states that "[w]here the parties fail to agree [to additional discovery], a party may move for additional discovery." I......
  • Issue Nineteen: PTAB Trial Tracker
    • United States
    • JD Supra United States
    • October 9, 2019
    ...Wanner Emily Rapalino Marta Delsignore Linnea Cipriano Cindy Chang 37 C.F.R. § 42.52 as a motion to compel testimony, and second under 37 C.F.R § 42.51 as a motion for additional discovery. The Board held that Petitioner’s identification of “a librarian” at MIT and the Library of Congress w......
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3 books & journal articles
  • Practical Considerations: Building Patent Trials into Your Litigation Strategy
    • United States
    • ABA General Library The practitioner’s guide to trials before the patent trial and appeal board
    • October 31, 2016
    ...provide for routine and additional discovery during Ofice proceedings. 46 Routine 41. See infra Chapter 5, Section A.3.a (discussing 37 C.F.R. § 42.51). 42. See Synopsis, Inc. v. Mentor Graphics Corp., IPR2012-00041, Paper 16 (Feb. 22, 2013) (petitioner did not submit a claim construction, ......
  • PTAB Trial Practice
    • United States
    • ABA General Library The practitioner’s guide to trials before the patent trial and appeal board
    • October 31, 2016
    ...discovery, which may be voluntary or compelled. 417 If voluntary, third‑party discovery generally follows the procedures under section 42.51 (discovery) and section 42.53 (testimony). 418 For example, voluntary third-party testimony must be in the form of an afidavit or declaration. 419 If ......
  • Inter Partes Review in ANDA Litigation
    • United States
    • ABA General Library ANDA litigation: strategies and tactics for pharmaceutical patent litigators
    • June 2, 2016
    ...Inc., IPR2013-00403, Paper. No. 33 (P.T.A.B. Dec. 30, 2014) (same). 57. 37 C.F.R. § 42.121(a)(1). 58. 35 U.S.C. § 316(a)(5); see also 37 C.F.R. § 42.51. 59. 37 C.F.R. § 42.51(b)(2). 60. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper No. 26, at 6–7 (P.T.A.B. Mar. 5, ......