In its Decision, the Board granted Petitioner’s Motion for Additional Discovery with respect to sales data and the complete deposition of Ms. Wang and Mr. Drobinski entered in the instant proceeding. The Board denied Petitioner’s Motion for Additional Discovery for the production of other testimony of Ms. Wang and Mr. Drobinski. Continue reading
Takeaway: A limited request for additional documents that will assist the Board in determining whether Petitioner has identified the real-parties-in-interest may be granted provided the request otherwise satisfies the five factors from Garmin v. Cuozzo.
In its Order, the Board granted Patent Owner’s request for additional discovery. The Board also granted both Patent Owner’s and Petitioner’s motions to seal and for entry of a protective order. Continue reading
Takeaway: Constraints imposed by a protective order in a related district court litigation does not relieve a party from providing reliable, specific evidence and information sufficient to establish that the requested additional discovery is necessary in the interest of justice.
In its Order, the Board denied Patent Owner’s Motion for Additional Discovery of documents regarding alleged secondary considerations and real parties in interest identified by Petitioner. The Motion requested 25-50 documents that were produced as confidential information in a co-pending district court action. Patent Owner based its request on hearsay statements of Patent Owner’s un-named district court litigation counsel that these documents will provide evidence of secondary considerations and activities and interrelationships of various Daifuku corporate entities. Patent Owner argued that it is unable to provide further information because of constraints imposed by a protective order entered in the co-pending district court litigation. 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: The Board may authorize application for a subpoena to compel deposition testimony of a third party declarant where the declarant’s personal knowledge is relevant to the public availability of a prior art reference.
In its Order, the Board authorized Patent Owner to apply for a subpoena from the district court to obtain testimony from third party Oracle Corporation. After Patent Owner filed its Motion for Authorization to Compel Testimony (Motion to Compel), counsel for Oracle contacted the Board to request a call concerning the scope of Patent Owner’s request. During the call among the parties, Oracle, and the Board, Petitioner indicated that it would not oppose the request. Continue reading
Takeaway: Questioning a witness about an exhibit to attempt to question the witness’s credibility without any basis for such questioning is akin to a “fishing expedition” and may be prohibited by the Board.
In its Order, the Board denied Patent Owner’s request to retake the deposition of Petitioner’s witness. During the deposition of Petitioner’s witness a dispute arose concerning questioning the witness with respect to an exhibit, which was a marked-up copy of a manual that is not asserted as prior art in this proceeding. Patent Owner sought to rely on the exhibit to question the witness’s credibility by ascertaining whether the questioning regarding the exhibit would lead to inconsistencies with respect to the witness’s testimony. However, Patent Owner could not provide the Board with a sufficient basis for questioning the witness’s credibility in the first place or for questioning the witness at all regarding the exhibit. The Board found that this questioning was akin to a “fishing expedition” and in conflict with 37 C.F.R. § 42.1(b), which requires the Board to resolve the proceeding in a just, speedy, and inexpensive manner. Therefore, the Board determined that there was not sufficient reason to take the deposition of the witness again. Continue reading
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
In its Order, the Board granted-in-part Patent Owner’s Motion for Additional Discovery – as to Requests (1), (2), and (3) – and denied Patent Owner’s Motion for Additional Discovery as to all other requests. In this connection, the Board ordered Petitioner to produce and serve the documents associated with Requests (1), (2), and (3) within one week (or by a date agreed upon by the parties). 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
In its Order, the Board granted Patent Owner’s Request to Compel the Depositions of Declarants Ms. Paula Carey and Ms. Elizabeth Sheehan. At the same time, the Board permitted Petitioner to attend each deposition and conduct re-direct examination. Continue reading