Takeaway: Authorization for the filing of a Motion for Additional Discovery can be sought in the event a declarant for the Petitioner gives opinions that purport to rely on statements to the declarant by the inventor of the challenged patent(s) and employees of the Patent Owner.
In its Order, the Board authorized Petitioner to file a Motion for Additional Discovery, and for Patent Owner to file an Opposition. Petitioner in its Motion is required to state how much time it proposes for each requested deposition and to identify what specific issues will be addressed if the depositions are permitted. The Motion must also explain why Petitioner believes that requested depositions of three individuals in question are “necessary in the interest of justice” consistent with the guidelines in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 (March 5, 2013) (See USPTO Representative Orders, Decisions, and Notices).
The focus of the proposed Motion for Additional Discovery was on a declaration by Dr. Yadin David which Patent Owner had filed in order to show secondary considerations of nonobviousness including commercial success, long-felt need, and copying. Dr. David’s declaration relied upon discussions that he alleged to have had with Stephen J. Brown (who is the named inventor on the challenged patents) and two employees of the Patent Owner. Petitioner argued that discovery regarding Dr. David’s discussions was warranted because he relied on them in forming his opinions, and because, according to Petitioner, Dr. David has insufficient expertise to give the opinions that he rendered in his declaration without the information with which he was provided. Petitioner thus requested Patent Owner to identify the specific employees of Patent Owner with whom Dr. David spoke, and to make them and Mr. Brown available for deposition.
Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc., IPR2013-00431; IPR2013-00449; IPR2013-00451; and IPR2013-00468
Paper 35: Order on Conduct of the Proceedings
Dated: April 24, 2014
Patents 7,921,186 B2, 7,840,420 B2, 7,587,469 B2, and 7,516,192 B2
Before: Stephen C. Siu, Justin T. Arbes and Miriam L. Quinn Written by: Arbes
Related Proceeding: IPR2013-00469