Takeaway: An agreement requiring a party to perform clearance reviews on products will likely not support a motion for additional discovery into the issue of real parties-in-interest because IPRs are reviews of patents, not products.
In its Order, the Board denied Patent Owner’s Motion for Routine or Additional Discovery. Patent Owner requested discovery that it believes may lead to evidence showing that Activision Publishing, Inc. is an unnamed real party-in-interest in the proceeding. Patent Owner filed a complaint alleging infringement by Activision over a year prior to the filing of the Petitions. Petitioner stated that Activision is a publisher that publishes videogames, including Destiny, which Petitioner created. Petitioner states that it only has a duty to indemnify Activision if a third party serves a complaint asserting that Destiny infringes a patent, and even then, Petitioner is solely responsible for the costs of the defense and has all control over the defense. Patent Owner wrote a letter to Activision’s counsel stating that it intended to add Destiny as a product-at-issue in the lawsuit, but neither Destiny nor any other product of Petitioner has ever been added to that lawsuit. Continue reading
Takeaway: The Board may authorize briefing on a patent owner’s motion to exclude evidence and arguments that are allegedly newly raised in a petitioner’s reply where the same was not presented as part of the petition.
In its Order, the Board addressed Patent Owner’s request for authorization to file a motion to exclude certain evidence. After having conducted a telephone conference with the parties, the Board granted Patent Owner’s request
Patent Owner sought authorization to move to expunge or strike portions of Petitioner’s Replies in IPR2014-01372 and IPR2014-01374 for allegedly containing new arguments or relying on new evidence. In particular, Patent Owner argued that “the Replies cite to new portions of the challenged patents, not cited in the Petition, to support new theories that the patents disclose certain limitations.” In response, Petitioner argued that the allegedly new evidence and arguments were in response to arguments presented in Patent Owner’s Responses. The Board decided to authorize briefing “[g]iven the technical detail in the argument presented.”
Patent Owner also asserted “it was prejudiced because Petitioner did not file expert declarations with the Replies to explain the alleged new theories regarding unpatentability, even though it filed expert declarations with the Petitions.” The Board disagreed, noting that declarations are not required but that “the lack of a declaration is a factor the Board can consider in determining how much weight it gives the arguments in the Replies.” Thus, the Board ordered that Patent Owner not discuss the lack of declarations with Petitioner’s Replies in its Motion, and that Patent Owner cannot move to exclude any sections on that basis.
Smart Modular Technologies Inc. v. Netlist, Inc., IPR2014-01372 and IPR2014-001374
Paper 32: Order on Conduct of the Proceedings
Dated: October 9, 2015
Patents: 8,001,434 B1; 8,359,501 B1
Before: Linda M. Gaudette, Bryan F. Moore, and Peter P. Chen
Written by: Moore
Takeaway: An important factor of whether discovery requests are “responsibly tailored and restrained in scope” is whether the party seeking discovery can demonstrate more than a mere possibility that it will obtain the evidence it seeks.
In its Decision following a conference call with the parties, the Board granted Patent Owner’s request for authorization to file a motion for additional discovery concerning whether Salesforce.com, Inc. is a real party-in-interest in the proceedings. The panel was “persuaded that further briefing would assist the Board in deciding whether to provide Patent Owner with additional discovery in this case.” Continue reading
Takeaway: Authorization to seek a subpoena to compel testimony by an expert was denied where the request was made too close to the deadline for submitting any supplemental evidence arising from such compelled testimony.
In its Order, the Board denied Patent Owner’s request for authorization to seek a subpoena and its request for an extension of the deadline to submit supplemental evidence. Patent Owner requested a conference call to request authorization to seek a subpoena from a district court and for an extension of the deadline to submit supplemental evidence. Continue reading
Takeaway: If a party files any request that is not explicitly allowed for by the rules, that party must state whether it conferred with the opposing party and whether the opposing party opposes the request.
In its Order, the Board denied Patent Owner’s Request to File Corrected Exhibit. Patent Owner inadvertently omitted an attachment to its declaration. Although Patent Owner stated that a copy of the missing exhibit was provided to Petitioner immediately upon discovery of the omission, Patent Owner failed to indicate whether it conferred with Petitioner or whether Petitioner intends to oppose the filing of the corrected exhibit. Therefore, the Board denied Patent Owner’s Request, but granted leave to re-file after conferring with Petitioner. Continue reading
Takeaway: In order to present testimonial evidence with its preliminary response, the patent owner must show that it would be in the interests of justice and overcome the fact that petitioner would not have an opportunity to cross examine the declarant.
In its Order, the Board denied Patent Owner’s request to file new testimonial evidence under 37 C.F.R. § 42.107(c). The parties had a conference call with the Board to discuss Patent Owner’s request to submit the testimonial evidence. Pursuant to 37 C.F.R. § 42.107(c), a patent owner’s preliminary response “shall not present new testimony evidence beyond that already of record, except as authorized by the Board.” Generally, a patent owner submits testimonial evidence in its response after institution. Continue reading
Takeaway: An inventor oath submitted with a patent application is not “affidavit testimony” and does not entitle the petitioner to cross examine the inventor.
In its Order, the Board denied Petitioner’s request to file a motion to compel the deposition testimony of a named inventor of the ’807 Patent and denied Patent Owner’s request to file a motion for sanctions. Continue reading
Takeaway: A different claim construction standard is applicable in the district court in determining infringement than the broadest reasonable interpretation standard applied by the Board in determining patentability.
In its Order, the Board refrained from authorizing Patent Owner to file a motion to compel routine discovery. The Board also indicated that Patent Owner was not authorized to file a motion to stay any of the referenced proceedings, or a motion to change or extend the due dates in the existing Scheduling Orders. Continue reading