Granting Petitioner’s Motion for Authorization to Compel Third Party Testimony IPR2014-01385

IBM v. Intellectual Ventures I LLC

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Takeaway: A Petitioner or Patent Owner can obtain authorization from the Board to apply for a subpoena from a United States District Court for testimony and documents of an entity that is not a party to the proceeding, if the Petitioner or Patent Owner (1) identifies, as specifically as possible, what testimony and documents it seeks from the third party, (2) explains why such information is relevant and needed at this stage in the proceeding, (3) describes all efforts made by Petitioner to obtain the information outside the use of a subpoena, and (4) demonstrates more than a possibility that it will obtain the evidence it seeks.

In its Order, the Board granted Petitioner authorization to apply for a subpoena from the Clerk of the United States District Court for the district where the testimony of Oracle Corporation, which is not a party of this proceeding, is to be taken limited to the document request and deposition request submitted in this proceeding as Exhibit 1015. The Board also granted Patent Owner permission to attend the deposition and cross-examine the witness, but only regarding the subject matter of the direct testimony of the witness. Continue reading

Denying Authorization for Additional Discovery IPR2014-00360

Takeaway: The Board does not have authority to issue a subpoena for the production of a witness residing in the United States; instead, such production must be compelled through a subpoena from a U.S. District Court.

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

Denying Motion for Additional Discovery IPR2014-00605

Takeaway: The Board may deny a Motion for Additional Discovery when the scope of the Motion exceeds the Board’s previous authorization, especially in the case where the Board has previously cautioned the parties about the Board’s prohibition against unauthorized motions.

In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery because Patent Owner had not met its burden of showing that the requested additional discovery was needed in order to satisfy the interests of justice.  Also, the Board ordered that Patent Owner’s Exhibit 2001 was to be expunged. Continue reading

Denying Motion to Compel Additional Discovery IPR2014-00003

Takeaway: The Board will likely deny a motion to compel additional discovery that seeks production of inconsistent statements that are already subject to routine discovery.

In its Order, the Board denied Petitioner’s Motion to Compel Additional Discovery. The burden is on Petitioner as the moving party to demonstrate entitlement to the relief requested.  In particular, Petitioner “must show that such additional discovery is in the interests of justice.”  The Board considers the following factors: “(1) the request is based on more than a mere possibility of finding something useful; (2) the request does not seek the litigation positions of the other party; (3) the information is not reasonably available through other means; (4) the request is easily understandable; and (5) the request is not overly burdensome to answer.” Continue reading

Granting in part additional discovery IPR2014-00735, 717

Takeaway: In a motion for additional discovery into whether a third party is a real party-in-interest, evidence that the third party was allowed to intervene in a proceeding involving the petitioner in order to protect that third party’s interests may be persuasive.

In its Order, the Board granted in part and denied in part Patent Owner’s Motion for Additional Discovery. The Board had granted Patent Owner’s request to file a motion for additional discovery into whether Google, Inc. is a real party-in-interest in the two related proceedings. Continue reading

Denying Motion for Additional Discovery IPR2013-00576

Takeaway: The Board found that a deposition of a declarant in a previous reexamination is overly burdensome where the declarant is not under the party’s control, resides in Japan, and may require a subpoena or to invoke the Hague Convention. Further, a declaration will be given little to no weight if the declarant is not made available for cross-examination.

In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery under 37 C.F.R. § 42.51(b)(2). The Board previously authorized Patent Owner to file the Motion for Additional Discovery as it pertained to a deposition of an expert who had previously prepared a declaration for a reexamination that was relied on by Petitioner in its Reply to Patent Owner’s Response. After considering Patent Owner’s Motion and Petitioner’s Response, the Board determined that, although Patent Owner’s position has merit in relation to certain Garmin factors, it would not grant the request for additional discovery. The Board was not persuaded that the deposition was “necessary in the interest of justice” under the circumstances of this case. Particularly, the Board determined that to make the expert available for a deposition may be “overly burdensome to answer” (fifth Garmin factor), because the expert is not under Petitioner’s control, resides in Japan, and such action may require a court subpoena and/or to invoke the Hague Convention. Continue reading

Denying Motion for Discovery IPR2014-00309

Takeaway: Routine discovery includes production of any exhibit cited in a paper or testimony and relevant information that is inconsistent with a position advanced during the proceeding; additional discovery, in contrast, is only granted when necessary in the interest of justice.

In its Order, the Board denied Petitioner’s Motion for Discovery with respect to each of a plurality of Requests that Petitioner had made. In particular, Petitioner’s Motion was denied with respect to each of Petitioner’s Requests A(1)–(3) and B(1)–(5). Continue reading

Denying Motion for Additional Discovery IPR2014-00245

Takeaway: In requesting additional discovery, the moving party must provide a threshold amount of evidence related to what is sought to establish that there is more than a mere possibility that the request would uncover something useful.

In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery. Patent Owner sought additional discovery pertaining to its assertion of objective indications of non-obviousness. Continue reading

Granting Authorization to File Motion for Additional Discovery IPR2013-00576

Takeaway: The Board will apply a “necessary in the interest of justice” standard in deciding whether to grant a motion for additional discovery.

In its Order, the Board authorized Patent Owner to file a motion for additional discovery under 37 C.F.R. § 42.51(b)(2). Also, the Board authorized Petitioner to file an opposition as well as a motion to expunge for the purpose of replacing certain exhibits. Continue reading

Order Concerning Motion for Additional Discovery IPR2014-00717

Takeaway: The Board may authorize Patent Owner to file a motion for additional discovery in view of a purported indemnification requirement alleged to show funding or control by a third party of the proceeding in question.

In its Order, the Board authorized Patent Owner to file a Motion for Additional Discovery and authorized Petitioner to file an Opposition to Patent Owner’s Motion for Additional Discovery, with each of these papers not to exceed 10 pages of argument.  No reply to Petitioner’s Opposition was authorized. Continue reading