Common Mistakes in Petitions

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Attorney Argument in the Claim Charts

In Tissue Transplant Technology Ltd. v.  MiMedx Group, Inc., IPR2015-00320, Paper 6 (December 31, 2014), the Board granted the petition a filing date, but found the claim charts objectionable because they contained attorney argument, and gave petitioner five business days to make corrections.

In Starbucks Corporation v. Kroy Holdings, LLC, IPR2015-00260, Paper 5 (December 23. 2005), the Board granted the petition a filing date, but found the claim charts objectionable because they contained attorney argument, and gave petitioner five business days to make corrections.

In Daifuku Co., Ltd. v. Murata Machinery, Ltd., IPR2-15-00083, Paper 5 (November 7, 2014), the Board granted the petition a filing date, but found the claim charts objectionable because they contained attorney argument, and gave petitioner five business days to make corrections

Exhibit Labels

Sometimes the smallest things can thwart you.  In FarmedHere, LLC v. Just Greens, LLC, IPR2015-00333, Paper 6 (December 31, 2014), petitioner exhibits were found improper for violating 37 C.F.R. § 42.63(d), which requires each exhibit have an exhibit label with the Petitioner’s name, a unique exhibit number and unique page numbering affixed to the lower right corner of the exhibit’s pages.  The Board granted the petition a filing date, and gave petitioner five business days to make corrections

 

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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.