Topic: Discovery

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New PTAB Rules Take Effect May 2, 2016

The Patent Office has published a final rule with amendments to 37 CFR § 42, et seq., governing IPR, CBM, PGR, and derivation proceedings before the Patent Trial and Appeal Board. The new rules take effect Monday, May 2, 2016 and apply to all AIA petitions filed on or after that date and to any ongoing proceeding … Continue reading

Refused Cross-Examination Results in PTAB Striking Non-Party Witness Declaration

In HTC Corp. v. NFC Tech., LLC, the PTAB granted the Petitioner’s motion to strike and expunge the declaration of the Patent Owner’s non-party witness, who refused to submit to cross-examination. IPR2014-01198, Paper 41 (Nov. 6, 2015). The Patent Owner submitted a declaration of a non-party witness residing in France to support its alleged earlier … Continue reading

PTAB denies motion seeking cross-examination of inventor, finding that patent specification is not “affidavit testimony”

In Westlake Services, LLC v Credit Acceptance Corp., Petitioner was denied authorization to file a motion to compel the deposition testimony of the named inventor for the patent under review. CBM2014-00176, Paper 29 (May 18, 2015). Although Patent Owner had not submitted testimony evidence from the inventor in the form of an affidavit or declaration, … Continue reading

PTAB allows submission of video deposition testimony as part of Patent Owner Response

In Pacific Market Int’l v. Ignite USA, LLC, the PTAB authorized submission of six videos as exhibits along with the Patent Owner Response. IPR2014-00561, Paper 27 (Feb. 5, 2015). 37 C.F.R. § 42.53(a) states that “[u]ncompelled direct testimony must be submitted in the form of an affidavit. All other testimony, including testimony compelled under 35 … Continue reading

PTAB clarifies what qualifies as “new” testimony in a Preliminary Response

In B/E Aerospace, Inc. v MAG Aerospace Industries, LLC, the PTAB decided that testimonial evidence submitted in the Patent Owner’s Preliminary Response, which was created for related litigation, was “new” testimonial evidence under 37 C.F.R. § 42.107(c). IPR2014-01510, Paper 13 (Jan. 20, 2015). Thus, the Board ordered that the testimony and any associated arguments in … Continue reading

PTAB denies patent owner’s request for additional third party discovery

In Alternative Legal Solutions, Inc. v. Employment Law Compliance, Inc., the PTAB denied the Patent Owner’s motion for authorization to compel third party testimony and production of documents regarding whether a reference qualified as a “printed publication,” finding that there was not more than a mere possibility or mere allegation that something useful to the … Continue reading

Do not delay in deposing declarants whose declarations have only been served but not yet filed

In Valeo, Inc. v. Magna Electronics, Inc., the PTAB declined to grant the Patent Owner’s request to order a deposition of Petitioner’s declarant, stating that the Patent Owner was not prevented from deposing the declarant earlier merely because the declarant’s deposition was not of record. IPR2014-00221 & IPR2014-00227, Paper 27 (Nov. 13, 2014). The declaration … Continue reading

PTAB orders discovery of law firm invoices without reaching the question of waiver

In GEA Process Engineering, Inc. v. Steuben Foods, Inc., the PTAB ordered Petitioner to produce invoices from its counsel, based on Patent Owner’s argument that related entities represented by Petitioner’s counsel in the related district court litigation were real-parties-in-interest (RPIs) in the IPR proceedings. IPR2014-00041, Paper 90 (September 12, 2014) (available in redacted form as … Continue reading

“Speaking objections” improper and could result in exclusion of testimony

In Medtronic Inc. v. Troy R. Norred, the PTAB warned that “speaking objections” interposed by Patent Owner’s counsel during deposition of Patent Owner’s expert were improper under the Office Patent Trial Practice Guide, and that further violations of the Practice Guide could warrant sanctions, including exclusion of the primary declaration testimony from the witness being … Continue reading

PTAB declines to compel deposition of declarant . . . but warns of consequences for not producing declarant for cross-examination

In Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., the Patent Trial and Appeal Board (PTAB) denied a patent owner’s request for additional discovery that sought the deposition of a declarant whose testimony was relied on by the petitioner in its Reply to the Patent Owner’s Response.  IPR2013-00576, Paper 36 (Sept. 5, 2014). … Continue reading

PTAB grants early, limited request for additional discovery where requesting party brought forth evidence showing usefulness

In Arris Group, Inc. v. C-Cation Technologies, LLC, the Patent Trial and Appeal Board (PTAB) took the rare step of granting a party’s request for additional discovery.  IPR2014-00746, Paper 15 (July 24, 2014). This decision illustrates the evidentiary showing required to justify additional discovery. Patent owner C-Cation sought production of indemnity agreements between petitioner Arris … Continue reading

Deposition scope not limited to documents cited or discussed in declaration

In Medtronic, Inc. v. Endotach, LLC, the Patent Trial and Appeal Board (PTAB) rejected a patent owner’s attempt to limit the scope of the deposition of its witness to the documents discussed or cited in the witness’s declaration.  IPR2014-00453, Paper 32 (Aug. 28, 2014). After receiving a deposition notice indicating that the petitioner intended to … Continue reading
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