Takeaway: A non-party’s agreement to produce requested discovery within the schedule of the proceeding and an indication as to the lack of burden on the non-party is likely persuasive to the Board when deciding whether to authorize a party’s application for a subpoena.
In its Order, the Board addressed matters that had been discussed during a consolidated conference call with the parties. Initially, the Board ordered the parties to jointly file a public version of Exhibit 3001, which was filed under seal. The Board then addressed Petitioner’s request for permission to seek additional discovery with respect to several items. Continue reading
Takeaway: Deposition transcripts that are relied upon by declarants are routine discovery under 37 C.F.R. § 42.51(b)(1)(i).
In its Order, the Board determined that Patent Owner could use depositions during the cross-examination of Petitioner’s declarants. Petitioner’s declarations refer to seven deposition transcripts. During the call, Petitioner offered to allow Patent Owner to use the entirety of the depositions during cross-examinations, but not the underlying exhibits because Petitioner stated they were not reviewed by the declarants. The Board agreed that the depositions, but not the underlying exhibits, are routine discovery under § 42.51(b)(1)(i). The Board noted that Petitioner opened the door to use of the depositions when it filed declarations relying upon their content. The Board further noted that Patent Owner may question the declarants on what material they reviewed in preparing the declarations.
Under Armour, Inc. v. Adidas AG, IPR2015-00698; IPR2015-00700
Paper 37: Order on Routine Discovery
Dated: March 18, 2016
Patents: 8,092,345 B2; 8,579,767 B2
Before/Written by: Jennifer S. Bisk
Takeaway: Cross examination of affidavit testimony obtained during a prior proceeding that is relied upon in support of a petition is authorized under the routine discovery rule and does not require a motion for additional discovery showing good cause. Moreover, it is the petitioner’s burden to produce such a witness for cross examination.
In its Order, the Board authorized Patent Owner to cross examine Petitioner’s witness. Patent Owner had contacted the Board seeking a discovery ruling to allow cross examination of a witness Petitioner had relied upon in showing that a certain reference qualifies as prior art. Petitioner argued that cross examination is not permitted per the routine discovery rule 37 C.F.R. § 42.51(b)(1) and further argued that the witness was unavailable. The Board authorized cross examination and determined that Petitioner—rather than Patent Owner—is responsible for producing the witness for cross examination. Continue reading
Takeaway: In moving for additional discovery, the request should be tailored and restrained in scope.
In its Decision, the Board granted Patent Owner’s request for authorization to file a motion for additional discovery directed to evidence regarding whether certain additional parties should be listed as real parties-in-interest.
Takeaway: In a request for rehearing, the movant must focus on areas that were misapprehended or overlooked by the Board.
In its Decision, the Board granted-in-part Patent Owner’s Request for Rehearing on the Board’s Decision to deny Patent Owner’s Motion for Additional Discovery. In that Decision, the Board found that “Patent Owner has not met its burden in showing additional discovery is in the interests of justice as required under 37 C.F.R. § 42.51(b)(2).” Patent Owner argued in its Request for Rehearing that “[s]ince the Motion was directed to improperly omitted [real parties-in-interest] in particular, the evidence presented in the Motion only needed to show beyond speculation that something useful would be uncovered as to the [real party-in-interest] issues. The Motion certainly met this standard.”
Takeaway: A party seeking to compel testimony or the production of documents via a subpoena must first file a motion for authorization or the compelled evidence will not be admitted in the proceeding.
In its Order, the Board granted Petitioner’s opposed motion for authorization to compel third-party testimony and production of documents by seeking authorization to serve a subpoena. “A party seeking to compel testimony or the production of documents via a subpoena must first file a motion for authorization or the compelled evidence will not be admitted in this proceeding.” See 37 C.F.R. § 42.52(a); see also 35 U.S.C. § 24. The Board “generally consider[s] the Garmin factors in determining whether discovery is in the interest of justice.” See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26) (informative). Continue reading
Takeaway: A party can be ordered to submit information it produced in a related proceeding under a protective order, if that information is cited to by that party or if that information is inconsistent with positions taken by that party in the instant proceeding.
In its Order, the Board granted Petitioner’s motion to compel with regard to IPR2015-00594 (the ’594 proceeding), but denied Petitioner’s motion with regard to IPR2015-00592 (the ’592 proceeding). Specifically, Petitioner “sought the transcript of the deposition of Mr. Mombers in the related International Trade Commission (ITC) proceeding, and other information related to inventorship of Favrat.” Continue reading
Takeaway: A significant delay in filing a request for additional discovery once a party becomes aware of the existence of the items sought to be discovered can result in the Board denying the request.
In its Order, the Board denied Patent Owner’s Motion for Discovery. Patent Owner sought discovery of certain sales agreements. Petitioner had purchased seven bottling machines from GEA Process Engineering, Inc. (“GEA”) and GEA’s predecessor, Procomac SpA. These seven machines were purchased in three groupings: (1) lines 1–5, (2) line 6/7, and (3) line 8. Patent Owner contends that the sales agreement(s) it seeks pertain to lines 1–5 and 6/7, and will likely establish that Petitioner had the right to control the GEA litigation. Continue reading