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
Category Archives: Discovery
Motion for Routine Discovery Granted as to Deposition Transcripts Referred to by Declarants IPR2015-00698, IPR2015-00700
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
Patent Owner’s Discovery Request to Cross Examine Witness Granted as Routine Discovery CBM2015-00179
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
Motion for Additional Discovery Authorized IPR2016-00364
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.
Request For Rehearing Granted-In-Part IPR2015-01047
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.”
Order Denying Authorization For A Motion To Request Additional Discovery IPR2015-00636, 00637
In its Order, the Board declined to authorize Patent Owner’s proposed motion to request additional discovery relating to certain claim charts associated with proceeding IPR2015-00636 or proceeding IPR2015-00637.
Petitioner’s Motion to Compel Testimony and Production of Documents To Rebut Motion to Amend Authorized IPR2015-00872
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
Granting Motion to Compel Routine Discovery Cited in Patent Owner Response IPR2015-00592; IPR2015-00594
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
Order Regarding Obligation of Party to Make Third-Party Declarant Available for Cross-Examination IPR2015-01322
In its Order, the Board denied Patent Owner’s request to file a motion to strike; authorized Petitioner to file a motion to apply for a subpoena to compel the cross-examination testimony of Lindsey Miles; and authorized Patent Owner to file an opposition thereto. Continue reading
Request for Additional Discovery Denied Where Requesting Sales Agreements To Prove Privity IPR2015-00195, 249
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