In its Order, with respect to IPR2014-00043, parallel reexamination of the subject ‘435 Patent was ongoing. Petitioner asserted that because a claim construction had been adopted in the reexamination that was inconsistent with a claim construction that had been adopted by the Board in IPR2014-00043, a motion to stay or consolidate the parallel reexamination was appropriate. Thus, the Board authorized Petitioner to file motion for stay or consolidation of the parallel reexamination, and authorized the Patent Owner to file an opposition.
In IPR2014-00041, IPR2014-00051, IPR2014-00054, and IPR2014-00055, the Patent Owner sought to disqualify Petitioner’s witness, Dr. Dunn, who submitted a declaration in support of the Petitions, and sought the production of documents, allegedly in the possession of Dr. Dunn, reflecting communications between Dr. Dunn and the Patent Owner that purportedly occurred prior to the filing of these petitions. In particular, the Patent Owner sought the production of a draft declaration prepared by Dr. Dunn. The Board declined to order Petitioner to instruct Dr. Dunn to product the draft declaration through Petitioner’s counsel, because the Patent Owner did not sufficiently demonstrate that Petitioner’s counsel can instruct Dr. Dunn to produce the draft declaration. Instead, the Board authorized the Patent Owner to file a motion to compel the production of document(s) by Dr. Dunn, and authorized Petitioner to file an opposition.
The Board noted that the USPTO does not have authority to issue a subpoena for the production of documents. Instead, production of documents is compelled through a subpoena from a U.S. District Court. See 35 U.S.C. § 24 and 37 C.F.R. §§ 42.52 and 41.52. Section 42.52(a) requires the party seeking to compel production of documents to first obtain authorization from the Board; otherwise, the compelled evidence will not be admitted in the proceeding.
GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00041, IPR2014-00043, IPR2014-00051, IPR2014-00054, and IPR2014-00055
Paper 22 (00041), 23 (00043), 21 (00051), 18 (00054), and 14 (00055): Order Authorizing Petitioner to file Motion to Stay or Consolidate Parallel Reexamination and Patent Owner to file Motion to Compel Production of Documents
Dated: April 15, 2014
Patent 6,945,013 B2 (00041), 6,475,435 B1 (00043), 6,209,591 B1 (00051), 6,481,468 B1 (00054), and 6,536,188 B1 (00055)
Before: Rama G. Elleru, Beverly M. Bunting, and Carl M. DeFranco
Written by: Elluru