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ARTICLE · 10 NOVEMBER 2014

PTAB Clarifies Permissible Use Of Documents And Evidence

McDermott Will & Emery
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In the Medtronic case, the PTAB clarified the scope of documents that a party is permitted to use when cross-examining an expert witness.

United StatesIntellectual Property
Nicole Clouse
Nicole Clouse
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Medtronic, Inc. v. Endotach, LLC and Trivascular, Inc. v. Samuels

In two recent inter partes review (IPR) proceedings, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) addressed the scope of permissible use of documents not included in the cited evidence of record, finding in one case the use was permissible because while the document was not cited it could still be within the scope of the deponent's direct testimony and finding in the other case the use to be impermissible because it constituted a new document(s) that would prejudice petitioner. Medtronic, Inc. v. Endotach, LLC, Case No. IPR2014-00100 (PTAB, Aug. 28, 2014) (Fitzpatrick, APJ); Trivascular, Inc. v. Samuels, Case No. IPR2013-00493 (PTAB, Sept. 2, 2014) (Kamholz, APJ).

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