Use of Evidence in the Patent Owner’s Preliminary Response

In Greene’s Energy Group, LLC v. Oil States Energer Services, LLC, IPR2014-00216, Paper 7, March 3, 2014, the Board reminded the patent owner that evidence in support of a preliminaryresponse may be submitted, provided that it does not constitute new testimonial evidence.  37 C.F.R. § 42.107(c). The Patent Owner may submit new testimony with Patent Owner’s full response to the Petition.  The Board also cautioned that if a preliminary response is accompanied by a motion to seal, any redacted information cannot be utilized in the Board’s decision to institute a proceeding. Thus the patent owner should narrowly tailor any redactions to the information that is confidential, as well as consider other ways of presenting the confidential information that would not require redaction.  Documents cannot be submitted under seal until a  protective order preserving the confidentiality of designated information is submitted.  37 C.F.R. §§ 42.54-55.

 

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.