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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 or trial before the Office. A revised Trial Practice Guide is forthcoming.

The published final rule describing the amended rules is available here. A redline comparing the amended rules to the old rules is available here.

We detail the major … 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 invention date. Pursuant to the Board’s Rules and the Hague Convention, the Petitioner sought to cross-examine the witness in France, but he refused “for personal reasons” after initially indicating a willingness to be deposed, which resulted in a scheduling delay impacting the panel … 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, 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 … 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 U.S.C. 24, must be in the form of a deposition transcript. Parties may agree to video-recorded testimony, but may not submit such testimony without prior authorization of the Board.”

In accordance with 37 C.F.R. § 42.53(a), Patent Owner requested authorization to submit six … 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 the Preliminary Response not be considered in determining whether to institute the IPR.

37 C.F.R. § 42.107(a) permits a Patent Owner faced with an IPR petition to file a Preliminary Response setting forth reasons why no IPR should be instituted. However, 37 C.F.R. … 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 proceeding would be found, and that the request was overly burdensome. IPR2014-00562, Paper 22 (Dec. 23, 2014).

The Patent Owner sought testimony and production of documents from three individuals regarding the authentication of a prior art reference cited by the Petitioner known as … 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 was not of record because the Petitioner did not file the declaration with the PTAB, although the Petitioner served the declaration on the Patent Owner earlier in the proceeding in response to the Patent Owner’s objection challenging the authenticity of a publication.

The Patent … 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 IPR2014-00041, Paper 117).

A motion for additional discovery, including a request for “Legal bills issued by Pillsbury Winthrop Shaw Pittman LLP to GPNA, Procomac, and/or GEA Group for services rendered in connection with the Proceeding,” was previously denied by the PTAB as not … 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 deposed.  IPR2014-00111, Paper 23 (Oct. 8, 2014).

During the deposition, the Petitioner initiated a conference call to the administrative judges to obtain guidance regarding the form of counsel’s objections.  The objection began, “Objection, misleading . . .” and went on to explain at … 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).

Citing the fifth Garmin factor, the Board declined to compel the petitioner to produce a witness “who is not under Petitioner’s control” and “who may reside in Japan.”

The news was not all good for the petitioner, however.  The Board went on to … 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 Group and non-party Comcast. C-Cation believed the agreements would establish that Arris Group was in privity with Comcast in a previous litigation involving the challenged patent, which would time bar Arris Group’s IPR petition.

A party seeking any discovery beyond the narrow scope … 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 possibly use certain documents during a deposition of the patent owner’s witness, the patent owner requested a conference call with the Board.

Because the documents at issue (including a declaration the witness filed in district court and three U.S. patents), were not discussed … Continue Reading

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