In its Order, the Board granted Patent Owner leave to file a Motion to Compel Additional Discovery, concluding that additional briefing was needed. Prior to the initial conference to discuss the Scheduling Order and any contemplated motions, Patent Owner indicated that it intended to file a Motion to Compel Additional Discovery as well as a Motion to Exclude Evidence.
First, the Board noted that authorization is not required for a party to file a Motion to Exclude Evidence. See 37 C.F.R. § 42.64(c).
Second, with respect to additional discovery, the parties were not able to reach agreement under 37 C.F.R. § 51(b)(2). Patent Owner sought four categories of documents that it explained were related to the development of shredders by ACCO, and particularly, “information related to statement made by Mr. Aries, a person associated with ACCO.” The Board concluded that additional briefing was warranted and authorized the filing of a Motion to Compel Additional Discovery, directing the parties’ attention to Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC., IPR2012-00001, Paper 26 (March 5, 2013) for guidance.
ACCO Brands Corp. v. Fellowes, Inc., IPR 2013-00566
Paper 12: Initial Conference Summary and Order – Conduct of the Proceeding
Dated: March 21, 2014
Patent 8,464,767 B2
Before: Josiah C. Cocks, Benjamin D. M. Wood, and Richard E. Rice
Written by: Cocks
Related Proceedings: Northern District of Illinois, Eastern Division, Civil Action Nos. 1:10-CV07587 (CONSOLIDATED) and 1:11-CV-081487 (RELATED)