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, Petitioner sought to cross-examine the inventor under 37 C.F.R. § 42.51(b) regarding prior art that allegedly conflicted with the patent specification. In arguing that the inventor’s deposition was routine discovery under Rule 42.51(b)(1)(ii), Petitioner asserted that the patent specification is affidavit testimony giving rise to a right to cross-examine.
Petitioner argued that the patent is testimony of the inventor because the inventor signed an oath, accompanying the patent application, stating that he read and understood the contents of the patent specification when the application was filed.
The Board pointed out that Petitioner did not offer any precedent for a patent specification being considered to be affidavit testimony of the inventor, but that Petitioner had instead proffered that courts have referred to the statements in the patent specification as inventor statements. The Board held that the existence of the required oath or affidavit that accompanies a patent application does not convert the patent specification into inventor “affidavit testimony” under Rule 42.51(b)(1)(ii). Notably, the Board stated that “[i]f that were the case, inventor testimony would be sought as routine discovery in nearly every case,” possibly telegraphing the Board’s reluctance to make findings that have sweeping implications in its trials.
Petitioner alternatively sought the inventor’s deposition as additional discovery under 37 C.F.R. § 42.51(b)(2). However, the Board found that “Petitioner has given us no reason to conclude that inventor testimony on this prior art would net any useful information,” and thus that the first Garmin factor for additional discovery (“The party requesting discovery should already be in possession of evidence tending to show beyond speculation that something useful will be uncovered”) was not met. Accordingly, the Board denied Petitioner’s request for authorization to file a motion to compel the inventor’s testimony under both Rule 42.51(b)(1) and Rule 42.51(b)(2).
Patent Owner sought authorization to file a motion for sanctions due to Petitioner having failed to meet and confer adequately regarding Petitioner’s efforts to seek the inventor’s testimony. When queried by Patent Owner as to the basis for seeking the inventor’s testimony, Petitioner merely quoted Rule 42.51(b). Although declining to authorize a motion for sanctions, the Board admonished Petitioner for its “failure to meaningfully engage in the meet and confer process and to discuss and disclose its position to Patent Owner prior to the conference call” and pointed out that the Board has the power to impose sanctions for such behavior.
Some takeaways from this decision are:
- Arguing a position that is likely to have broad applicability to PTAB trials, and particularly this is likely to open the door for added discovery in most trials, is likely to meet resistance from the Board;
- A position that is asserting an unusual interpretation of Board rules should be supported with some showing of precedent for that interpretation;
- Any alternative positions being asserted in a PTAB discovery motion should be fully supported to avoid having them summarily dismissed by the Board when the primary position is found wanting; and
- Meeting and conferring in good faith requires meaningfully engaging with the other party and disclosing one’s asserted position—doing less might result in the Board imposing sanctions.