Granting Motion for Leave to File Motion to Compel Discovery IPR2013-00567, 68, IPR2014-00541


Takeaway: The Board does not have subpoena power so a party may not compel documents from third parties.

In its Order, the Board authorized Patent Owner to file a Motion to Compel Discovery of a report submitted by Petitioner’s declarant in an ITC proceeding. Patent Owner argued that it believed that the report contained testimony from Petitioner’s declarant that is inconsistent with his testimony in the inter partes review proceedings based upon a reference to the testimony in the decision of the ITC.  Patent Owner inquired about the possibility of a subpoena, either issued by the Board or through a District Court, to pursue production of the report from a third party.  Petitioner stated that it did not believe that the report contains inconsistent statements, and stated that neither it nor the declarant had copies of the report, which were destroyed in accordance with the protective order entered in the ITC proceeding.

The Board stated that it does not have subpoena power, but that during the deposition, Patent Owner can question declarant regarding the statements he made that appear in the ITC written decision. The Board authorized Patent Owner to file a motion to compel production of the report, and stated that in that motion, Patent Owner must explain its basis for believing that the report contains inconsistent statements.  The Board also stated that in its opposition, Petitioner must explain the circumstances regarding the destruction of the report and where any copies are located.

The Board also discussed Petitioner’s motion to join IPR2014-00541 with IPR2013-00567 and IPR2013-00568. Even though the Board had not yet decided whether to institute trial in IPR2014-00541, Petitioner requested that scheduling of that review be modified to align with the other proceedings, specifically requesting that the Board impose a two-week time period for Patent Owner to file its preliminary patent owner response pursuant to Ariosa Diagnositcs v. Isis Innovation Ltd., IPR2013-00250.  Patent Owner stated that it was willing to expedite the filing of the preliminary patent owner response and to work with Petitioner to develop a schedule that is agreeable to both parties if trial is instituted in IPR2014-00541 and the motion for joinder is granted.  The Board requested that the parties stipulate to a schedule and file the stipulation via notice.

Wintek Corp. v. TPK Touch Solutions, IPR2013-00567, IPR2013-00568, IPR2014-00541
Paper 18: Order on Conduct of the Proceeding
Dated: April 23, 2014
Patent 8,217,902
Before: Josiah C. Cocks, Richard E. Rice, and Adam V. Floyd
Written by: Cocks