Request for Additional Discovery Denied for Not Showing It Would Be Necessary In The Interests of Justice IPR2015-00436

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Takeaway: A request for additional discovery to obtain information that is allegedly inconsistent with the opposing party’s position should explain how the additional documents (1) would be applied, and (2) would be necessary in the interests of justice.

In its Decision, the Board denied Petitioner authorization to file any discovery motion.

Petitioner requested authorization to file a motion to compel Patent Owner to produce certain materials as routine discovery or a motion for additional discovery. Petitioner asserted that Patent Owner had relevant information that is inconsistent regarding the positions Patent Owner adopted in its Response. Patent Owner argued that Petitioner’s request is untimely and overbroad, and that Petitioner had not shown a basis for producing the requested items as routine or additional discovery. Continue reading

Order Granting Motion to Compel IPR2015-00731

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Takeaway: While production of a complete document is preferred, there is no obligation to produce non-relevant highly confidential business information, which may be redacted.

In its Decision, the Board granted Patent Owner’s Motion to Compel ordering production by Petitioner and authorized Patent Owner to file a motion to terminate.

Previously, after corporate reorganization, Petitioner had filed a Motion to Re-Caption the Proceeding (the “Motion”), which was granted. The Motion stated that “[b]y the Contribution Agreement, Lumentum Operations LLC assumed responsibility of ‘Assumed Action,’ including this proceeding.” That statement “was supported by a footnote that purportedly contained confidential information which referred to a non-public document identified as ‘Schedule 5.5(A) of the Contribution Agreement.’” Continue reading

Motion for Additional Discovery Authorized IPR2015-01866-68

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Takeaway: Providing specific information gleaned from a related district court litigation that suggests that additional discovery may exist to show that there are other real parties-in-interest will increase a patent owner’s chances of getting authorization to file a motion for additional discovery.

In its Order, the Board authorized Patent Owner to file a motion for additional discovery. Patent Owner requested authorization to file a motion for additional discovery limited to the issue of whether LG Display or LG Electronics and Petitioner are privies. Patent Owner stated that it learned recently in the related district court litigation, to which Petitioner is not a party, of evidence of a supply agreement between Petitioner and LG Display or LG Electronics that may contain indemnification obligations. Patent Owner also referenced admissions of payment made in conjunction with discovery responses that may substantiate these contentions.

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Additional Discovery Regarding Real-Party-In-Interest Denied IPR2015-01046

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Takeaway: Merely alleging that funds from a hedge fund are being used in a proceeding, without more, is insufficient to constitute more than a mere possibility that something useful will be discovered as evidence of a real-party-in-interest.

In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery. The Board had previously authorized Patent Owner to file a Motion for Additional Discovery regarding whether additional parties should have been named as a real-party-interest (RPI) in the instant proceeding. The Board had also authorized Petitioner to file an Opposition thereto. Continue reading

Authorized To Cross-Examine After Declaration Was Filed Regardless Of Service Date IPR2015-00014

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Takeaway: A party is not required to cross-examine a declarant at the time when the opposing party is first served with the declaration; rather, cross-examination can take place after supplemental evidence relating to the direct testimony has been filed.

In its Order, the Board mooted Patent Owner’s Request for Authorization to depose Petitioner’s declarant and ordered Petitioner to expunge the declarant’s testimony from the proceedings.      Continue reading

Order Advising that Cross-Examination Will Occur Before At Least One Member of the Board IPR2015-00977

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Takeaway: Witnesses are required to be available for cross-examination in the United States. However, the Board has the discretion to allow a party to substitute witnesses, where travel problems are discovered and brought to the attention of the Board at a time early enough in the trial not to prejudice the other party in meeting deadlines necessitated by the one-year statutory deadline.

In its Order, the Board advised the parties that cross-examination of Patent Owner’s witnesses would take place live before at least one member of the panel. Patent Owner submitted declarations for three witnesses, at least two of which for different reasons may not be able to travel to the United States for cross-examination. Dr. Promtov, a resident of Russia, has not been able to obtain a visa to enter the United States and may not be able to obtain on within a time that would permit cross-examination to take place in a manner that would allow the IPR to complete within the one-year statutory time period. Dr. Moholkar, a resident of India, is the sole individual who can attend to his father’s illness, and he may not be able to travel until the father has sufficiently recuperated. Dr. Kellens, a resident of Belgium, may be able to travel to the United States without substantial difficulty.

The Board has elected to hear cross-examination of the three witnesses live before at least one member of the panel. If any witness is unable to attend the live cross-examination, then Patent Owner can substitute a witness and file a Replacement Opposition and Replacement Declaration(s). Any testimony no longer relied upon in the Replacement Opposition would be expunged from the record.

The Board noted that Patent Owner had chosen these witnesses, but because Patent Owner had brought these concerns to the Board early, it was able to implement an alternative Plan B if any witness was unable to travel to the United States.

Arisdyne Systems, Inc. v. Cavitation Technologies, Inc., IPR2015-00977
Paper 32: Order on Cross Examination
Dated: December 15, 2015
Patent: 8,911,808 B2
Before: Fred E. McKelvey, James T. Moore, and Brian P. Murphy
Written by: McKelvey

Additional Discovery into RPI Granted Where Evidence Showed Petitioner May Act as Agent or Proxy for Third Parties IPR2015-01750,01752

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Takeaway: The Board may grant permission for focused discovery to ascertain whether a certain third party is a real party-in-interest that should have been named in the petition, in particular, where the petitioner’s business model implies that it may act as an agent or proxy for third parties.

In its Decision, the Board granted Patent Owner’s Motion for Additional Discovery. Patent Owner sought additional discovery from Petitioner to determine whether a third party should have been identified as a real party-in-interest in the proceedings. Petitioner, however, argued that Patent Owner failed to meet the first Garmin factor, and thus discovery should be denied. Continue reading

Order Granting Motion to Compel Routine Discovery IPR2015-00015, 16, 19, 25, 26, 34, 100, 108, 128

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Takeaway: A party must serve on the other party any documents that are inconsistent with a position advanced by that party during the proceeding as part of routine discovery. 

In its Decision, the Board granted Petitioner’s Motion for Routine Discovery.  Specifically, Petitioner sought production of a PowerPoint presentation and a Word document that it contends are inconsistent with several statements Patent Owner made in support of its Patent Owner Response regarding Patent Owner’s commercial products, which it alleges practices all of the challenged independent claims.  Continue reading

Declaration Expunged Where Declarant Refused Cross-Examination IPR2014-01198

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Takeaway: If a party proffers a witness’s testimony, that party must make that witness available for cross-examination by the other party.

In its Order, the Board granted-in-part, Petitioner’s Motion to Strike the Declaration of Patent Owner’s witness. Patent Owner submitted the Declaration of Francois Lepron with the Patent Owner Response. Mr. Lepron refused to be deposed for personal reasons. The Board authorized Petitioner to file a Motion to Strike the Lepron Declaration and for Patent Owner to file an Opposition to Petitioner’s Motion to Strike. Continue reading

Denying Authorization to Request Deposition Testimony That Would Carry No Extra Weight IPR2015-00483, 00485

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Takeaway: Deposition of a reference’s author may not be warranted where a party’s expert will provide testimony regarding how a person of ordinary skill in the art would have understood the reference and testimony of the author would carry no extra weight.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion to compel routine discovery or, in the alternative, authorization to file a motion for additional discovery. Continue reading