justicedao/patent-legal-corpus huggingface dataset:
37 CFR 42.51 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Discovery.

§ 42.51 Discovery. (a) Mandatory initial disclosures. (1) With agreement. Parties may agree to mandatory discovery requiring the initial disclosures set forth in the Office Patent Trial Practice Guide. (i) The parties must submit any agreement reached on initial disclosures by no later than the filing of the patent owner preliminary response or the expiration of the time period for filing such a response. The initial disclosures of the parties shall be filed as exhibits. (ii) Upon the institution of a trial, parties may automatically take discovery of the information identified in the initial disclosures. (2) Without agreement. Where the parties fail to agree to the mandatory discovery set forth in paragraph (a)(1), a party may seek such discovery by motion. (b) Limited discovery. A party is not entitled to discovery except as provided in paragraph (a) of this section, or as otherwise authorized in this subpart. (1) Routine discovery. Except as the Board may otherwise order: (i) Unless previously served or otherwise by agreement of the parties, any exhibit cited in a paper or in testimony must be served with the citing paper or testimony. (ii) Cross examination of affidavit testimony prepared for the proceeding is authorized within such time period as the Board may set. (iii) Unless previously served, a party must serve relevant information that is inconsistent with a position advanced by the party during the proceeding concurrent with the filing of the documents or things that contains the inconsistency. This requirement does not make discoverable anything otherwise protected by legally recognized privileges such as attorney-client or attorney work product. This requirement extends to inventors, corporate officers, and persons involved in the preparation or filing of the documents or things. (2) Additional discovery. (i) The parties may agree to additional discovery between themselves. Where the parties fail to agree, a party may move for additional discovery. The moving party must show that such additional discovery is in the interests of justice, except in post-grant reviews where additional discovery is limited to evidence directly related to factual assertions advanced by either party in the proceeding ( see § 42.224). The Board may specify conditions for such additional discovery. (ii) When appropriate, a party may obtain production of documents and things during cross examination of an opponent's witness or during authorized compelled testimony under § 42.52. (c) Production of documents. Except as otherwise ordered by the Board, a party producing documents and things shall either provide copies to the opposing party or make the documents and things available for inspection and copying at a reasonable time and location in the United States. [77 FR 48669, Aug. 14, 2012, as amended at 80 FR 28565, May 19, 2015]
37 CFR 42.52 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Compelling testimony and production.

§ 42.52 Compelling testimony and production. (a) Authorization required. A party seeking to compel testimony or production of documents or things must file a motion for authorization. The motion must describe the general relevance of the testimony, document, or thing, and must: (1) In the case of testimony, identify the witness by name or title; and (2) In the case of a document or thing, the general nature of the document or thing. (b) Outside the United States. For testimony or production sought outside the United States, the motion must also: (1) In the case of testimony. (i) Identify the foreign country and explain why the party believes the witness can be compelled to testify in the foreign country, including a description of the procedures that will be used to compel the testimony in the foreign country and an estimate of the time it is expected to take to obtain the testimony; and (ii) Demonstrate that the party has made reasonable efforts to secure the agreement of the witness to testify in the United States but has been unsuccessful in obtaining the agreement, even though the party has offered to pay the travel expenses of the witness to testify in the United States. (2) In the case of production of a document or thing. (i) Identify the foreign country and explain why the party believes production of the document or thing can be compelled in the foreign country, including a description of the procedures that will be used to compel production of the document or thing in the foreign country and an estimate of the time it is expected to take to obtain production of the document or thing; and (ii) Demonstrate that the party has made reasonable efforts to obtain the agreement of the individual or entity having possession, custody, or control of the document or thing to produce the document or thing in the United States but has been unsuccessful in obtaining that agreement, even though the party has offered to pay the expenses of producing the document or thing in the United States.
37 CFR 42.54 — [Reserved] Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Protective order.

§ 42.54 Protective order. (a) A party may file a motion to seal where the motion to seal contains a proposed protective order, such as the default protective order set forth in the Office Patent Trial Practice Guide. The motion must include a certification that the moving party has in good faith conferred or attempted to confer with other affected parties in an effort to resolve the dispute. The Board may, for good cause, issue an order to protect a party or person from disclosing confidential information, including, but not limited to, one or more of the following: (1) Forbidding the disclosure or discovery; (2) Specifying terms, including time and place, for the disclosure or discovery; (3) Prescribing a discovery method other than the one selected by the party seeking discovery; (4) Forbidding inquiry into certain matters, or limiting the scope of disclosure or discovery to certain matters; (5) Designating the persons who may be present while the discovery is conducted; (6) Requiring that a deposition be sealed and opened only by order of the Board; (7) Requiring that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed only in a specified way; and (8) Requiring that the parties simultaneously file specified documents or information in sealed envelopes, to be opened as the Board directs. (b) [Reserved]
37 CFR 42.55 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Confidential information in a petition.

§ 42.55 Confidential information in a petition. A petitioner filing confidential information with a petition may, concurrent with the filing of the petition, file a motion to seal with a proposed protective order as to the confidential information. The institution of the requested trial will constitute a grant of the motion to seal unless otherwise ordered by the Board. (a) Default protective order. Where a motion to seal requests entry of the default protective order set forth in the Office Patent Trial Practice Guide, the petitioner must file, but need not serve, the confidential information under seal. The patent owner may only access the filed sealed information prior to the institution of the trial by agreeing to the terms of the default protective order or obtaining relief from the Board. (b) Protective orders other than default protective order. Where a motion to seal requests entry of a protective order other than the default protective order, the petitioner must file, but need not serve, the confidential information under seal. The patent owner may only access the sealed confidential information prior to the institution of the trial by: (1) agreeing to the terms of the protective order requested by the petitioner; (2) agreeing to the terms of a protective order that the parties file jointly; or (3) obtaining entry of a protective order ( e.g., the default protective order).
37 CFR 42.57 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Privilege for patent practitioners.

§ 42.57 Privilege for patent practitioners. (a) Privileged communications. A communication between a client and a USPTO patent practitioner or a foreign jurisdiction patent practitioner that is reasonably necessary and incident to the scope of the practitioner's authority shall receive the same protections of privilege under Federal law as if that communication were between a client and an attorney authorized to practice in the United States, including all limitations and exceptions. (b) Definitions. The term “USPTO patent practitioner” means a person who has fulfilled the requirements to practice patent matters before the United States Patent and Trademark Office under § 11.7 of this chapter. “Foreign jurisdiction patent practitioner” means a person who is authorized to provide legal advice on patent matters in a foreign jurisdiction, provided that the jurisdiction establishes professional qualifications and the practitioner satisfies them. For foreign jurisdiction practitioners, this rule applies regardless of whether that jurisdiction provides privilege or an equivalent under its laws. (c) Scope of coverage. USPTO patent practitioners and foreign jurisdiction patent practitioners shall receive the same treatment as attorneys on all issues affecting privilege or waiver, such as communications with employees or assistants of the practitioner and communications between multiple practitioners. [82 FR 51575, Nov. 7, 2017]
37 CFR 42.5 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Conduct of the proceeding.

§ 42.5 Conduct of the proceeding. (a) The Board may determine a proper course of conduct in a proceeding for any situation not specifically covered by this part and may enter non-final orders to administer the proceeding. (b) The Board may waive or suspend a requirement of parts 1, 41, and 42 and may place conditions on the waiver or suspension. (c) Times. (1) Setting times. The Board may set times by order. Times set by rule are default and may be modified by order. Any modification of times will take any applicable statutory pendency goal into account. (2) Extension of time. A request for an extension of time must be supported by a showing of good cause. (3) Late action. A late action will be excused on a showing of good cause or upon a Board decision that consideration on the merits would be in the interests of justice. (d) Ex parte communications. Communication regarding a specific proceeding with a Board member defined in 35 U.S.C. 6(a) is not permitted unless both parties have an opportunity to be involved in the communication.
37 CFR 42.61 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Admissibility.

§ 42.61 Admissibility. (a) Evidence that is not taken, sought, or filed in accordance with this subpart is not admissible. (b) Records of the Office. Certification is not necessary as a condition to admissibility when the evidence to be submitted is a record of the Office to which all parties have access. (c) Specification and drawings. A specification or drawing of a United States patent application or patent is admissible as evidence only to prove what the specification or drawing describes. If there is data in the specification or a drawing upon which a party intends to rely to prove the truth of the data, an affidavit by an individual having first-hand knowledge of how the data was generated must be filed.
37 CFR 42.62 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Applicability of the Federal rules of evidence.

§ 42.62 Applicability of the Federal rules of evidence. (a) Generally. Except as otherwise provided in this subpart, the Federal Rules of Evidence shall apply to a proceeding. (b) Exclusions. Those portions of the Federal Rules of Evidence relating to criminal proceedings, juries, and other matters not relevant to proceedings under this subpart shall not apply. (c) Modifications in terminology. Unless otherwise clear from context, the following terms of the Federal Rules of Evidence shall be construed as indicated: Appellate court means United States Court of Appeals for the Federal Circuit. Civil action, civil proceeding, and action mean a proceeding before the Board under part 42. Courts of the United States, U.S. Magistrate, court, trial court, trier of fact, and judge mean Board. Hearing means, as defined in Federal Rule of Evidence 804(a)(5), the time for taking testimony. Judicial notice means official notice. Trial or hearing in Federal Rule of Evidence 807 means the time for taking testimony. (d) In determining foreign law, the Board may consider any relevant material or source, including testimony, whether or not submitted by a party or admissible under the Federal Rules of Evidence.
37 CFR 42.63 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Form of evidence.

§ 42.63 Form of evidence. (a) Exhibits required. Evidence consists of affidavits, transcripts of depositions, documents, and things. All evidence must be filed in the form of an exhibit. (b) Translation required. When a party relies on a document or is required to produce a document in a language other than English, a translation of the document into English and an affidavit attesting to the accuracy of the translation must be filed with the document. (c) Exhibit numbering. Each party's exhibits must be uniquely numbered sequentially in a range the Board specifies. For the petitioner, the range is 1001-1999, and for the patent owner, the range is 2001-2999. (d) Exhibit format. An exhibit must conform with the requirements for papers in § 42.6 and the requirements of this paragraph. (1) Each exhibit must have an exhibit label. (i) An exhibit filed with the petition must include the petitioner's name followed by a unique exhibit number. (ii) For exhibits not filed with the petition, the exhibit label must include the party's name followed by a unique exhibit number, the names of the parties, and the trial number. (2) When the exhibit is a paper: (i) Each page must be uniquely numbered in sequence; and (ii) The exhibit label must be affixed to the lower right corner of the first page of the exhibit without obscuring information on the first page or, if obscuring is unavoidable, affixed to a duplicate first page. (e) Exhibit list. Each party must maintain an exhibit list with the exhibit number and a brief description of each exhibit. If the exhibit is not filed, the exhibit list should note that fact. A current exhibit list must be served whenever evidence is served and the current exhibit list must be filed when filing exhibits.
37 CFR 42.64 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Objection; motion to exclude.

§ 42.64 Objection; motion to exclude. (a) Deposition evidence. An objection to the admissibility of deposition evidence must be made during the deposition. Evidence to cure the objection must be provided during the deposition, unless the parties to the deposition stipulate otherwise on the deposition record. (b) Other evidence. For evidence other than deposition evidence: (1) Objection. Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial. Once a trial has been instituted, any objection must be filed within five business days of service of evidence to which the objection is directed. The objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence. (2) Supplemental evidence. The party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection. (c) Motion to exclude. A motion to exclude evidence must be filed to preserve any objection. The motion must identify the objections in the record in order and must explain the objections. The motion may be filed without prior authorization from the Board. [77 FR 48669, Aug. 14, 2012, as amended at 80 FR 28565, May 19, 2015]
37 CFR 42.65 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Expert testimony; tests and data.

§ 42.65 Expert testimony; tests and data. (a) Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. Testimony on United States patent law or patent examination practice will not be admitted. (b) If a party relies on a technical test or data from such a test, the party must provide an affidavit explaining: (1) Why the test or data is being used; (2) How the test was performed and the data was generated; (3) How the data is used to determine a value; (4) How the test is regarded in the relevant art; and (5) Any other information necessary for the Board to evaluate the test and data.
37 CFR 42.70 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Oral argument.

§ 42.70 Oral argument. (a) Request for oral argument. A party may request oral argument on an issue raised in a paper at a time set by the Board. The request must be filed as a separate paper and must specify the issues to be argued. (b) Demonstrative exhibits must be served at least seven business days before the oral argument and filed no later than the time of the oral argument. [77 FR 48669, Aug. 14, 2012, as amended at 81 FR 18765, Apr. 1, 2016]
37 CFR 42.71 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Decision on petitions or motions.

§ 42.71 Decision on petitions or motions. (a) Order of consideration. The Board may take up petitions or motions for decisions in any order, may grant, deny, or dismiss any petition or motion, and may enter any appropriate order. (b) Interlocutory decisions. A decision on a motion without a judgment is not final for the purposes of judicial review. If a decision is not a panel decision, the party may request that a panel rehear the decision. When rehearing a non-panel decision, a panel will review the decision for an abuse of discretion. A panel decision on an issue will govern the trial. (c) Petition decisions. A decision by the Board on whether to institute a trial is final and nonappealable. A party may request rehearing on a decision by the Board on whether to institute a trial pursuant to paragraph (d) of this section. When rehearing a decision on petition, a panel will review the decision for an abuse of discretion. (d) Rehearing. A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a sur-reply. A request for rehearing does not toll times for taking action. Any request must be filed: (1) Within 14 days of the entry of a non-final decision or a decision to institute a trial as to at least one ground of unpatentability asserted in the petition; or (2) Within 30 days of the entry of a final decision or a decision not to institute a trial. [77 FR 48669, Aug. 14, 2012, as amended at 80 FR 28565, May 19, 2015; 85 FR 79129, Dec. 9, 2020]
37 CFR 42.72 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Termination of trial.

§ 42.72 Termination of trial. The Board may terminate a trial without rendering a final written decision, where appropriate, including where the trial is consolidated with another proceeding or pursuant to a joint request under 35 U.S.C. 317(a) or 327(a).
37 CFR 42.73 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Judgment.

§ 42.73 Judgment. (a) A judgment, except in the case of a termination, disposes of all issues that were, or by motion reasonably could have been, raised and decided. (b) Request for adverse judgment. A party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include: (1) Disclaimer of the involved application or patent; (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial; (3) Concession of unpatentability or derivation of the contested subject matter; and (4) Abandonment of the contest. (c) Recommendation. The judgment may include a recommendation for further action by an examiner or by the Director. (d) Estoppel. (1) Petitioner other than in derivation proceeding. A petitioner, or the real party in interest or privy of the petitioner, is estopped in the Office from requesting or maintaining a proceeding with respect to a claim for which it has obtained a final written decision on patentability in an inter partes review, post-grant review, or a covered business method patent review, on any ground that the petitioner raised or reasonably could have raised during the trial, except that estoppel shall not apply to a petitioner, or to the real party in interest or privy of the petitioner who has settled under 35 U.S.C. 317 or 327. (2) In a derivation, the losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Office after the judgment that is inconsistent with that party's failure to move, except that a losing party shall not be estopped with respect to any contested subject matter for which that party was awarded a favorable judgment. (3) Patent applicant or owner. A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim; or (ii) An amendment of a specification or of a drawing that was denied during the trial proceeding, but this provision does not apply to an application or patent that has a different written description.
37 CFR 42.74 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Settlement.

§ 42.74 Settlement. (a) Board role. The parties may agree to settle any issue in a proceeding, but the Board is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Office practice. (b) Agreements in writing. Any agreement or understanding between the parties made in connection with, or in contemplation of, the termination of a proceeding shall be in writing and a true copy shall be filed with the Board before the termination of the trial. (c) Request to keep separate. A party to a settlement may request that the settlement be treated as business confidential information and be kept separate from the files of an involved patent or application. The request must be filed with the settlement. If a timely request is filed, the settlement shall only be available: (1) To a Government agency on written request to the Board; or (2) To any other person upon written request to the Board to make the settlement agreement available, along with the fee specified in § 42.15(d) and on a showing of good cause.
37 CFR 42.7 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Management of the record.

§ 42.7 Management of the record. (a) The Board may expunge any paper directed to a proceeding or filed while an application or patent is under the jurisdiction of the Board that is not authorized under this part or in a Board order or that is filed contrary to a Board order. (b) The Board may vacate or hold in abeyance any non-Board action directed to a proceeding while an application or patent is under the jurisdiction of the Board unless the action was authorized by the Board.