Takeaway: The Board expects counsel to respond to discussion requests within one to two business days unless the opposing party agrees to schedule the discussion for a later time.
In its Order, the Board directed the parties to discuss Patent Owner’s assertion that Petitioner had not met its discovery obligation to turn over relevant information that is inconsistent with its positions on issues under review. The Board also ordered Petitioner to make any additional disclosures necessary to meet its discovery obligations under 37 C.F.R. § 42.51(b)(1), and required Petitioner to file a statement affirming its compliance.
Patent Owner expressed concerns about Petitioner’s discovery compliance, citing prior litigation involving Petitioner in which its expert appeared to contradict its expert in this proceeding. Counsel for Patent Owner had contacted counsel for Petitioner to discuss the matter, but counsel for Petitioner had been unresponsive for two weeks. Although counsel for Petitioner explained that it had been in another trial during that period, the Board called that conduct “entirely unacceptable, especially when the event causing the ‘unavailability’ is a planned absence.” The Board noted that it expects counsel to respond to discussion requests within one or two business days in most cases. The Board directed the parties to discuss Patent Owner’s allegations, and authorized Petitioner to update its disclosure if necessary following that discussion.
Facebook, Inc. v. TLI Communications LLC, IPR2014-00566
Paper 11: Order on Conduct of Proceeding
Dated: June 23, 2014
Before: Jameson Lee, Bart A. Gerstenblith, and Jo-Anne M. Kokoski
Written By: Lee