Order Regarding Deposition Dispute and Reasonable Search for Inconsistent Positions IPR2013-00253

LinkedInTwitterFacebookGoogle+Share

After conducting two conference calls with the parties, the Board issued this Order to address two issues. First, the Board ordered that a declarant be made available for deposition by the Patent Owner. Second, the Board ordered the Patent Owner to certify that it conducted a reasonable search and inquiry for information inconsistent with a position advanced by the party during the proceeding.

The first issue concerned the Petitioner’s requested deposition of a declarant, Mr. Fine, pursuant to 37 C.F.R. § 42.51(b)(1)(ii). During prosecution of the challenged patent, a declaration by Mr. Fine was filed, and the Patent Owner cited to that declaration as an Exhibit in its Patent Owner Response. Petitioner argued that the Exhibit constituted “affidavit testimony” under Rule 42.51(b)(1)(ii), subject to cross-examination under routine discovery required by the Rules. Although the declaration was not prepared for the purposes of the IPR proceeding, the Board agreed with Petitioner and ordered that Mr. Fine be made available for deposition. However, the declarant could not be deposed due to medical issues, and the parties agreed to allow the Patent Owner to withdraw the declaration. The Board then authorized the Patent Owner to file a motion to expunge the Exhibit from the record during the second conference call.

The second issue concerned the Petitioner’s request for discovery from the Patent Owner. The Petitioner alleged the Patent Owner had not undertaken a reasonable search for information inconsistent with positions taken during the proceeding. The Patent Owner argued that such a search was conducted and that no such information was located that had not already been provided to Petitioner. The Board ordered Patent Owner to a file a signed certification attesting:

Upon reasonable search and inquiry, any relevant, nonprivileged information that is inconsistent with a position advanced by Patent Owner during this proceeding, has been produced or does not exist.

Ikaria, Inc. v. GeNO LLC, IPR2013-00253
Paper No. 20: Order on Conduct of the Proceeding
Dated: April 1, 2014
Patent No. 8,083,997 B2
Before: Lora M. Green, Scott E. Kamholz, and Christopher L Crumbley
Written by: Crumbley