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

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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

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Takeaway: Based on their technical backgrounds, judges at the Board are capable of addressing very technical arguments related to the disclosure of prior art and may not always agree with the technical analysis of the other judges on the Board’s panel.

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Takeaway: A declarant’s prior statements acknowledging an inventor being the first to report on claimed subject matter may not be inconsistent with later testimony that the same subject matter is unpatentable based on a patent prior art reference because patent references are not necessarily part of the body of work reported in academic literature.

In its Final Written Decision, the Board found that Petitioner established by a preponderance of the evidence that the challenged claims of the ’503 patent are unpatentable. The ’503 patent “is directed to a microfluidic device for analyzing and/or sorting biological materials. Continue reading

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

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Institution Granted Where SEC Filing Found to be Printed Publication IPR2015-01853

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Takeaway: Declaration testimony that repeats the statements presented in the petition without citing any evidence itself is not persuasive.

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In its Decision, the Board granted institution of inter partes review of each of the challenged claims 1-25 of the ’811 patent, because the Board determined Petitioner had demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of each of those claims. The ’811 patent “is directed to methods and devices for detecting a position-based attribute of a finger, stylus, or other object with a touchpad or other sensor having a touch-sensitive region that includes a plurality of electrodes.” Continue reading

Denying Rehearing of Decision Not to Institute Based on Lack of Showing of Abuse of Discretion IPR2015-01086

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Final Written Decision Finding Assertions of Long-Felt Need to be Unpersuasive IPR2014-01188

Takeaway: To support a conclusion of nonobviousness, an alleged long-felt need must have been a persistent one that was recognized by those of ordinary skill in the art, must not have been satisfied by another before the challenged patent, and must have been satisfied by the claimed invention. Continue reading