In its Order, the Board authorized Patent Owner to file a motion to compel production of the redacted portions of documents produced in response to a previously authorized production request. In a previous order, the Board ordered additional discovery with respect to one of Patent Owner’s requests for production. In response, Petitioner produced documents with redactions purportedly based on assertions of attorney-client privilege, common-interest privilege, confidentiality, and/or non-responsiveness to the authorized production request. No joint defense agreement or other evidence was provided to support the assertion of common-interest privilege. The Board authorized Patent Owner to file a motion to compel production of the redacted portions to determine if the bases for redaction have been asserted properly.
Also, Petitioner opposed the previously authorized deposition related to the production request. The opposition was based on the Patent Owner already addressing the affidavit testimony on which the deposition was based. Petitioner cited 37 C.F.R. § 42.53(d)(2), “which provides that ‘[c]ross-examination should ordinarily take place . . . more than a week before the filing date for any paper in which the cross-examination testimony is expected to be used’ (emphasis added).” The Board noted that the preferred timing set forth in 37 C.F.R. § 42.53(d)(2) is subject to the Board’s discretion. Using that discretion, the Board authorized the deposition to be held after the Board’s decision on Patent Owner’s motion to compel, since the documents in question are within the scope of the cross-examination.
Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453
Paper 47: Order on Conduct of the Proceeding
Dated: May 2, 2014
Patent 5,810,029
Before: Jennifer S. Bisk, James B. Arpin, and Patrick M. Boucher
Written by: Boucher