Extension of Time to Submit Supplemental Evidence Denied CBM2015-00179

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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

Denying Leave to File Motion for Joinder Based on Prejudice to Patent Owner IPR2016-00453

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

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

Authorizing Motion for Additional Discovery as to Documents Held by Third Parties IPR2015-01164; IPR2015-01165; IPR2015-01166

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

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

Order Granting Motion to Compel IPR2015-00731

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

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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Order Denying Authorization to File Reply to Preliminary Response IPR2015-01505, -01506, -01507

Takeaway: The rules prohibit the filing of a motion without prior authorization. Because e-mails to the Board may act as an attempt to circumvent this rule, parties should limit e-mail communications to the Board to requests for a conference call, including only a short explanation as to why the party requests the call, and avoid including substantive discussions.

In its Order, the Board ordered that no reply is authorized to be filed and that “except as otherwise authorized in the Rules of Practice in Patent Cases, 37 C.F.R. § 42 et. seq., no motions or other substantive correspondence may be filed in these proceedings without prior, express authorization.” Continue reading

Authorization To File Motion For Late Submission of Supplemental Information After Oral Argument IPR2015-00306

Takeaway: A motion for late submission of supplemental information under § 42.123(b) must show why the supplemental information reasonably could not have been obtained earlier and that consideration of the supplemental information would be in the interests of justice.

In its Order, the Board authorized Patent Owner to file a Motion for Late Submission of Supplemental Information.     Continue reading

Reply to Preliminary Response Authorized To Address Standing CBM2015-00168, 178

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