Granting In Part Additional Discovery Regarding Secondary Indicia IPR2015-00841

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Takeaway: Where a patent owner has proffered deposition testimony as relevant to secondary indicia of non-obviousness, the Board may determine that such documents are discoverable and relevant.

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

Granting Motion For Additional Discovery IPR2015-00545

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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

Denying Patent Owner’s Motion for Additional Discovery Regarding Secondary Considerations and Real Parties-in-Interest IPR2015-00083; IPR2015-00085; IPR2015-00088

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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

Denying Authorization to Seek a Subpoena to Compel Testimony IPR2014-01372; IPR2014-01374

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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

Granting Motion to Compel Testimony IPR2014-01385

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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

Denying Motion to Compel IPR2014-00571

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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

Denying Request to File Motion to Compel Deposition CBM2014-00176

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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

Additional Discovery Granted to Determine Real Party-In-Interest IPR2014-01201

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Takeaway: The corporate and management structure of a non-party company may be relevant to the issue of that company’s status as a real party-in-interest and may be a basis for additional discovery.

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

Denying Leave to File Motion to Compel Routine Discovery CBM2014-00190, 192, 193, 194, 199

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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

Granting patent owner’s motion to compel testimony IPR2014-00553

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Takeaway: A party may compel the deposition of a declarant for cross-examination purposes in the case where the declarant’s testimony is not limited to authentication of the documents in question.

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