In its Decision, the Board granted Petitioner’s Motion to Submit Supplemental Information as evidence to confirm the public accessibility of a prior art reference. Petitioner sought to submit several exhibits, including declarations related to the public accessibility of the Broggi reference as well as an article citing to the Broggi reference. Continue reading
Category Archives: Motion for Leave
Decision Granting Revised Pro Hac Vice Motion IPR2014-01002
In its Decision, the Board granted Patent Owner’s Revised Motion for Pro Hac Vice admission of counsel. In particular, the Board reversed a previous Decision and concluded that attorney Thomas E. Lynch, III was authorized to serve as back-up counsel representing Patent Owner in this proceeding. Continue reading
Denying Motion for Additional Discovery IPR2014-00899
In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery relating to the secondary consideration of copying. Patent Owner contended that Petitioner’s U.S. Patent No. 7,879,800 incorporates every step of the claimed process of the ’180 patent, and that the filing date of the PCT application that led to the ’800 patent is almost two years after the issuance of the ’180 patent. Accordingly, Patent Owner proposed two discovery requests: documents and information in the possession of Shabtai Bauer, or those working directly with Bauer in developing the process that was claimed in the ’800 patent during the time period between October 8, 2002 and September 22, 2004, (1) revealing any inspection, discuss, description, or characterization of the ’180 patent; and (2) sufficient to show the timeline of development of such process, including how each step for the process, and the order of those steps, was considered and selected. Continue reading
Order Regarding Translator Declarations CBM2014-00131, CBM2014-00137
In its Order, the Board resolved a dispute between the parties concerning whether Patent Owner is permitted to depose individuals who translated one of the references that forms the basis for the Board’s institution of review. In particular, the Board ordered Petitioner to file the declarations of individuals who translated portions of the prior art reference, ordered that Patent Owner is authorized to cross examine the individuals who translated the reference, and denied Petitioner’s request to file a motion for additional discovery. Continue reading
Order Regarding Filing of Exhibits, Corrected Response, and Motion to Seal IPR2014-00367
In its Order, the Board denied Patent Owner’s request to file certain exhibits, authorized Patent Owner’s “corrected” Response, and granted Patent Owner’s motion to seal. Continue reading
Granting Leave to File Motion to Strike Deposition Testimony CBM2014-00102, 106, 108, 112
In its Order, the Board authorized Petitioner to file a Motion to Strike questions and answers in the transcript of the deposition of Petitioner’s expert.
Petitioner requested a call with the Board during the deposition of its expert because it objected to the scope of questioning by Patent Owner’s counsel. Continue reading
Denying Authorization for Additional Discovery IPR2014-00360
In its Order, the Board denied Petitioner’s request for authorization to file a motion for additional discovery in relation to three out of four items that had been identified by Petitioner. At the same time, the Board conditionally granted Petitioner’s request for authorization to file a motion for additional discovery with respect to the fourth item, in the event that the parties were not able to resolve among themselves the issues relating to that item. Continue reading
Order on Conduct of the Proceeding IPR2014-00724
In its Order, the Board denied Patent Owner’s requests to file (1) a motion to terminate under 35 U.S.C. § 315(d); (2) motion to consolidate with IPR2014-00660; and (3) a motion to join with IPR2014-00660. The Board denied authorization to file a motion to terminate, because there is a possibility of termination of the review in IPR2014-00660 due to settlement and the similarity of the issues in the present review to those in the IPR2014-00660 are not enough to persuade the Board to terminate the present proceeding. Continue reading
Order on Conduct of the Proceeding IPR2014-01201
In its Order, the Board denied authorization to Petitioner to file a motion to strike Patent Owner’s Preliminary Response and denied authorization to Petitioner to file a motion to stay a related ex parte reexamination. Petitioner requested leave to file a motion to strike Patent Owner’s Preliminary Response for including new testimony evidence that is prohibited by 37 C.F.R. § 42.107(c). However, the Board denied leave to file the motion, because the Board would address the issue of adding new testimony evidence in its decision regarding institution. Also, the Board denied leave to file a motion to stay a related reexamination, because such a motion is premature until a decision on institution is rendered in this case.
Granting Leave to File a Motion for Additional Discovery IPR2014-00728, 809, 881
In its Order, the Board authorized Patent Owner to file a motion for additional discovery and Petitioner to file an opposition to the motion. Patent Owner seeks discovery of documents relating to copying by Petitioner, arguing that they are relevant to nonobviousness. Petitioner opposes, arguing that production of the requested discovery would be burdensome and costly, and are of little relevance because they related to infringement issues rather than patentability. The Board authorized briefing on the issue. Continue reading