Discovery : US PTO Litigation Alert™

APJs Confirm a Deposition Protocol

Scott Daniels | July 25, 2014

The issue of when an attorney defending a deposition in an IPR proceeding may privately speak with his or her witness arose this week in Focal Therapeutics v. Senorex (IPR2014-00116).

According to counsel for the Patent Owner, when he had concluded his cross-examination of the Petitioner’s expert witness, “Petitioner’s counsel initiated a private conference with his witness to discuss his redirect testimony.”  Evidently, counsel for the Patent Owner complained and the parties sought clarification from the APJs.  The question posed was whether during the specific period – after cross-examination concluded, but before redirect questioning has begun – may the defending attorney privately confer with the witness.


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APJs Distinguish Patent Owner’s Two Discovery Periods

Scott Daniels | May 12, 2014

Apart from the disclosure of the asserted prior art references, the most important piece of evidence in an inter partes review is the expert’s declaration.  Almost as important are the “observations” that a party may make on its cross-examination of the opposing party’s expert declarant, that is, arguments belittling the testimony of the opposing party’s expert.

A party must be careful, however, in choosing a time in which to take such cross-examination and in choosing a time to seek permission to make its observations.  The APJs’ discovery ruling last week in Respironics v. Zoll Medical (IPR2013-00322) is a case-in-point. There, Patent Owner Zoll cross-examined Petitioner Respironics’ expert declarant and the next day asked the APJs for guidance on how and when to request permission to make observations on that cross-examination.  The APJs gave a mixed answer, depending on the subject matter of the cross-examination.


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A First Glimpse on the Scope of Discovery in the New Post-Issuance PTO Proceedings

Scott Daniels | November 20, 2012

A major concern for practitioners contemplating the new post-issuance proceedings at the Patent Office has been the scope of discovery that the APJs would permit the parties.  Would it be as expansive and expensive as discovery in the District Courts?  In its various publications, the Patent Office indicated that it would not allow open-ended discovery, but that it would enforce narrow discovery requests that pin-point documents and information having a clear relevance to the case-determinative issues.

Last Thursday in SAP America v. Versata, CBN2012-00001, the Patent Office gave a concrete example of what it meant.  Summarizing a conference call among the parties, three APJs, including Lead Administrative Law Judge Michael Tierney, ruled on a series of discovery requests.

They granted requests for specific expert reports, deposition transcripts and a JMOL motion.  On the other hand, they did not grant a request for the exhibits and appendices attached to these five documents; still, they suggested that the two parties discuss the relevance of these documents, and they invited the requesting party to renew its discovery requests if the parties could not agree.  Finally, the APJs denied outright a broad request for “any documentation relating to the ‘R/3’ documentation.”

The message to the bar is to make specific discovery requests, explaining the relevance of the requested information to the case.

Apple’s Reexamination Counsel Avoids Deposition

Scott Daniels | August 16, 2011

Apple is currently suing Kodak in the Western District of New York for infringing a series of patents, among them, U.S. Patent No. 5,634,074.  Kodak initially replied with the customary defenses, but has now sought permission from the court to amend its pleadings to include an inequitable conduct defense, specifically that the “074 patent is unenforceable due to inequitable conduct committed by Apple, an inventor of the 074 patent and/or it attorneys during reexamination of the ‘074 patent.”  The ‘074 reexamination was requested in April 2010, and completed at the end of May 2011, when the PTO issued a reexamination certificate confirming the validity of all the ‘074 claims.

In support of its new defense, Kodak subpoenaed Apple’s reexamination counsel, asking for documents and a deposition on:

(1)   reexamination counsel’s analysis of the issues involved in the reexamination of the ‘074 patent;

(2)   prosecution of the ‘074 patent, including its reexamination;

(3)   reexamination counsel’s communications with Apple, other attorneys who prosecuted the ‘074 patent, and the USPTO;

(4)   reexamination counsel’s knowledge of the Kodak-Apple litigation and other litigation concerning the ‘074 patent; and

(5)   reexamination counsel’s understanding of reexamination practice before the USPTO.


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