Takeaway: If prior art status of a reference is contested in prior proceedings, a petitioner should address any such deficiencies in the first instance, and not rely on being granted permission to file supplemental evidence.
In its Decision, the Board denied Petitioner’s request for an extension of time to file supplemental evidence and request to file a motion to submit supplemental information, and granted Patent Owner’s request to file a motion to stay related reexamination. Continue reading
Takeaway: The Board may deny a request to file a motion for joinder where timing differential between petitions would make any logistical accommodations necessary to synchronize the proceedings prejudicial to patent owner and where the later-filed petition challenges additional claims.
In its Order, the Board denied Petitioner’s motion for leave to file a motion for joinder. The Board had previously conducted a conference call with counsel for Petitioner and Patent Owner, where “Petitioner requested authorization to file a Motion for Joinder to join this proceeding with IPR2015-01706, which is directed to the same patent and in which a trial was instituted on February 9, 2016, in order to obtain certain scheduling and logistical efficiencies.” Continue reading
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: In a set of related proceedings with different petitioners, the Board authorized a motion and oppositions thereto discussing whether documents held by non-parties in some of the proceedings and related to secondary considerations should be compelled as additional discovery.
In a first Order, the Board granted authorization for Patent Owner to file a 7-page motion for additional discovery and for Petitioner and two third parties whose documents had been requested and who are Petitioners in related proceedings each to file a 7-page opposition. In a second Order, the Board granted Patent Owner’s request for an enlargement of time to file its Response in each of the instant proceedings such that if Patent Owner’s motion for additional discovery is denied, it will get 5 business days to file its Response and if Patent Owner’s motion for additional discovery is granted, it will get 5 business days from the day the production is complete to file its Response. 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
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
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.
Takeaway: When the Patent Owner Preliminary Response raises an issue concerning standing of Petitioner, the Board may authorize Petitioner to file a Reply limited to addressing the standing issue.
In its Order, the Board authorized Petitioner to file a Reply to Patent Owner’s Preliminary Response limited to addressing Petitioner’s interpretation of statutes and regulations related to the issue of standing. The Board also authorized Petitioner to file an additional briefing regarding the claim construction issue. Continue reading