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


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.

Patent Owner had proposed a number of motions, including those referenced above. Authorization to file the motion to compel routine discovery was sought “under 37 C.F.R. § 42.51(b)(1)(iii) to obtain “documents from [Petitioner] related to any allegations by [Petitioner] (1) that any of [Petitioner’s] products do not infringe the challenged claim[s] and (2) that acceptable non-infringing alternatives exist to the challenged claim[s].” It was Patent Owner’s view that the sought-after documents should have been served with the Petitions because they were not consistent with assertions that Petitioner had made in the Petitions.

The Board denied Patent Owner’s motion for routine discovery for a number of reasons. For example, the Board noted that at least because the Board’s broadest reasonable interpretation (BRI) standard for determining patentability is different than the claim construction standard used in district court for determining infringement, “Petitioner’s alleged evidence of non-infringement and non-infringing alternatives in the district court is not inconsistent with [Petitioner’s] assertion in these cases that the challenged claims are unpatentable under 35 U.S.C. § 101.”

Patent Owner had requested authorization to stay all of the referenced CBM proceedings because the district court had ruled against Patent Owner regarding the patentability of the challenged claims under § 101. The Board disagreed, finding that “there is no justification to stay [the] proceedings given [its] statutory deadline to complete [the] proceedings within one-year of institution.”

Finally, Patent Owner had requested authorization to file a motion to extend the due dates of the various CBM proceedings “by a time sufficient to allow the Board to rule on the requests for rehearing and coordinate the schedules of the present proceedings and CBM2014-00200 and CBM2014-00204, should those cases be instituted on rehearing.” The purpose of this proposal, according to Patent Owner, was “to allow for a single deposition of Petitioner’s declarant.” The Board declined this request for authorization, deciding instead “to issue decisions resolving the requests for rehearing in a prompt manner” and, if it instituted trial in those cases, the Board indicated that it would reconsider schedules at that time. Thus, the Board indicated that it would follow the current schedules of record and reconsider oral hearing dates to the extent necessary at a later time. Also, the Board concurred with an agreement by the parties “to take a single deposition of any declarant in all related cases such that a single deposition transcript can be used in all related proceedings, but filed separately in each proceeding.”

Samsung Electronics America, Inc. and Samsung Electronics Co., Ltd. v. Smartflash LLC, CBM2014-00190, CBM2014-00192, CBM2014-00193, CBM2014-00194, CBM2014-00199
Papers 13, 11, 11, 14, 14: Order on Conduct of the Proceedings
Dated: May 6, 2015
Patents 7,334,720 B2; 8,033,458 B2; 8,061,598 B2; 8,118,221 B2; 8,118,221 B2
Before: Jennifer S. Bisk, Rama G. Elluru, Gregg I. Anderson, Matthew R. Clements, and Peter P. Chen
Written by: Elluru
Related Proceedings: Ongoing District Court litigation