Petitioner’s Motion to Compel Testimony and Production of Documents To Rebut Motion to Amend Authorized IPR2015-00872

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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

Granting Motion to Compel Routine Discovery Cited in Patent Owner Response IPR2015-00592; IPR2015-00594

Takeaway: A party can be ordered to submit information it produced in a related proceeding under a protective order, if that information is cited to by that party or if that information is inconsistent with positions taken by that party in the instant proceeding.

In its Order, the Board granted Petitioner’s motion to compel with regard to IPR2015-00594 (the ’594 proceeding), but denied Petitioner’s motion with regard to IPR2015-00592 (the ’592 proceeding). Specifically, Petitioner “sought the transcript of the deposition of Mr. Mombers in the related International Trade Commission (ITC) proceeding, and other information related to inventorship of Favrat.” 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

Request for Additional Discovery Denied for Not Showing It Would Be Necessary In The Interests of Justice IPR2015-00436

Takeaway: A request for additional discovery to obtain information that is allegedly inconsistent with the opposing party’s position should explain how the additional documents (1) would be applied, and (2) would be necessary in the interests of justice.

In its Decision, the Board denied Petitioner authorization to file any discovery motion.

Petitioner requested authorization to file a motion to compel Patent Owner to produce certain materials as routine discovery or a motion for additional discovery. Petitioner asserted that Patent Owner had relevant information that is inconsistent regarding the positions Patent Owner adopted in its Response. Patent Owner argued that Petitioner’s request is untimely and overbroad, and that Petitioner had not shown a basis for producing the requested items as routine or additional discovery. 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

Additional Discovery Regarding Real-Party-In-Interest Denied IPR2015-01046

Takeaway: Merely alleging that funds from a hedge fund are being used in a proceeding, without more, is insufficient to constitute more than a mere possibility that something useful will be discovered as evidence of a real-party-in-interest.

In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery. The Board had previously authorized Patent Owner to file a Motion for Additional Discovery regarding whether additional parties should have been named as a real-party-interest (RPI) in the instant proceeding. The Board had also authorized Petitioner to file an Opposition thereto. Continue reading

Order Granting Motion to Compel Routine Discovery IPR2015-00015, 16, 19, 25, 26, 34, 100, 108, 128

Takeaway: A party must serve on the other party any documents that are inconsistent with a position advanced by that party during the proceeding as part of routine discovery. 

In its Decision, the Board granted Petitioner’s Motion for Routine Discovery.  Specifically, Petitioner sought production of a PowerPoint presentation and a Word document that it contends are inconsistent with several statements Patent Owner made in support of its Patent Owner Response regarding Patent Owner’s commercial products, which it alleges practices all of the challenged independent claims.  Continue reading

Denying Authorization to Request Deposition Testimony That Would Carry No Extra Weight IPR2015-00483, 00485

Takeaway: Deposition of a reference’s author may not be warranted where a party’s expert will provide testimony regarding how a person of ordinary skill in the art would have understood the reference and testimony of the author would carry no extra weight.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion to compel routine discovery or, in the alternative, authorization to file a motion for additional discovery. Continue reading

Granting Motion For Additional Discovery Related To Secondary Considerations IPR2015-00595

Takeaway: Although a definite nexus had not been identified between the desired documents and the claims at issue, reasoning tending to show that the documents will have substantive value regarding secondary considerations may be sufficient to satisfy the first “Garmin factor.”

In its Decision, the Board granted Patent Owner’s Motion for Additional Discovery. Patent Owner requested from Petitioner twelve documents that Patent Owner alleges are related to secondary considerations of non-obviousness. The Board applied the five “Garmin factors” to determine whether to grant Patent Owner’s request. Continue reading