Denying Motion to Limit Deposition Time Limit CBM2014-00028, 29, 30, 31, 33


Takeaway: “Seven hours for expert depositions should be regarded as a time limit and not a requirement.”

In its Order, the Board summarized the initial conference call held with the parties and denied Petitioner’s request to limit the amount of time for deposing the experts.

No changes were made to the schedule, no protective order had been entered, no requests for additional discovery were expected, and the parties had nothing to report regarding settlement. Patent Owner indicated that it would file a Motion to Amend in CBM2014-00031 to cancel all the challenged claims, which Petitioner did not oppose.  Patent Owner also indicated that it planned to file a contingent Motion to Amend in CBM2014-00033 (and possibly others) and that it would request a conference call with the Board before filing.

The Board referred the parties to 37 C.F.R. § 42.64 regarding procedures for objecting to evidence and motions to exclude.  Parties that move to exclude must show that the proper procedures were followed.

Finally, Petitioner requested that the depositions of the experts be limited to a half day per expert per patent because the issues allegedly did not warrant the full seven hours provided in the rules. Patent Owner opposed.  The Board denied the request, stating that although the issues were limited, the expert declarations were quite detailed.  The Board stated that it expected the parties to cooperate to conduct the depositions efficiently and that “[s]even hours for expert depositions should be regarded as a time limit and not a requirement.”

Bank of America, N.A. v. Intellectual Ventures I and II LLC, CBM2014-00028; CBM2014-00029; CBM2014-00030; CBM2014-00031; CBM2014-00033
Paper 22: Order on Conduct of the Proceeding
Dated: June 24, 2014
Before: Thomas L. Giannetti, Hyun J. Jung, and Gregg I. Anderson
Written by: Giannetti