Order Authorizing Application for Subpoena to Obtain Discovery from Non-Party IPR2015-01242, -01243, -01244

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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

Motion for Routine Discovery Granted as to Deposition Transcripts Referred to by Declarants IPR2015-00698, IPR2015-00700

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

Patent Owner’s Discovery Request to Cross Examine Witness Granted as Routine Discovery CBM2015-00179

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

Request For Rehearing Granted-In-Part IPR2015-01047

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.”

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Order Denying Authorization For A Motion To Request Additional Discovery IPR2015-00636, 00637

Takeaway: A party may not be able to obtain draft versions of claim charts relied upon by the other party’s declarant as additional discovery if the request for authorization to seek additional discovery is untimely or is not likely to identify something useful in the draft claim charts.

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.

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Petitioner’s Motion to Compel Testimony and Production of Documents To Rebut Motion to Amend Authorized IPR2015-00872

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

Granting Motion to Compel Routine Discovery Cited in Patent Owner Response IPR2015-00592; IPR2015-00594

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

Order Regarding Obligation of Party to Make Third-Party Declarant Available for Cross-Examination IPR2015-01322

Takeaway: A party runs the risk that direct testimony will not be considered, if the declarant is not made available for cross-examination, even if the declarant is an employee of a third party that is requiring a subpoena before being available for cross-examination.

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

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