BACK TO THE FUTURE Discovery at the Patent Trial and Appeal Board (PTAB)

Transcription

1 BACK TO THE FUTURE Discovery at the Patent Trial and Appeal Board (PTAB) Oliver R. Ashe, Jr. ASHE, P.C Isaac Newton Sq. North Suite 210 Reston, VA Tel.: Fax:

2 Hypothetical Practitioners 1. PTO practitioner without inter partes Board experience 2. District court litigator without inter partes Board experience 3. Board practitioner with substantial interference experience 2

3 Views on Discovery in Interferences 1. PTO practitioner: I ve heard it s impossible to get 2. District court litigator: I know discovery, how can you litigate without it? 3. Board practitioner: Discovery is available, but limited in scope. 3

4 Discovery in AIA Proceedings Discovery Mandatory initial disclosures Routine discovery Additional discovery Cross-examination Compelling testimony and production Protective orders 4

5 Discovery in AIA Proceedings 5

6 AIA Proceedings Are Procedurally Analogous to Motions Phase of Interferences 6

7 Routine Discovery Cited exhibits ( 42.51(b)(1)(i)) Cross-examination ( 42.51(b)(1)(ii)) Relevant information that is inconsistent with a position advanced during the proceeding ( 42.51(b)(1)(iii); See also, Office Patent Trial Practice Guide examples) 7

8 Perspectives Regarding Cross-examination 1. How is this different from declarations in ex parte prosecution and inter partes reexamination? 2. Isn t this an opportunity to vigorously and verbosely defend your witness and frustrate the deposing attorney? 3. Isn t this an opportunity to ask as many questions as possible about your opponent s testimony ( and beyond)? 8

9 Cross-Examination Guidelines in Interferences Appendix of Standing Order in interferences (March 2011) Significant limits on form and substance of objections and communications with witness; sanctions for non-compliance Pevarello v. Lan, Interference No. 105,394, Paper No. 85 (BPAI, January 12, 2007) Bruce Stoner & Jill Browning, Deposition Do s and Don ts: The Patent Interference Bar Is Warned, Patent Law Blog (Patently- O), February 11,

10 BACK TO THE FUTURE Cross-Examination Guidelines in AIA Proceedings Office Patent Trial Practice Guide, 77 FR (August 14, 2012) Significant limits on form and substance of objections and communications with witness; sanctions for non-compliance Corning Incorporated v. DSM IP Assets B.V., IPR and IPR , Paper No. 29 (PTAB, July 8, 2013) 10

11 Board Practitioner s Perspective on Cross-Examination Evaluating pros and cons of cross-examination for each witness Violations of cross-examination guidelines: more than one problem? Objectives: Focused attacks Attempt to identify inconsistent relevant information Lay foundation for potential additional discovery Reinforce deficiencies in direct testimony Defending: clearly articulate objections to admissibility, preserving ability to later file motion to exclude 11

12 Additional Discovery in Interferences Discovery before the Board of Patent Interferences, 58 J. Pat. Office Soc'y 186, (1976) 37 C.F.R (1974) 37 C.F.R (1984) 37 C.F.R (2004) 12

13 Additional Discovery in Interferences Tropix Inc. v. Lumigen Inc., 53 USPQ2d 2018, (BPAI 2000)(binding precedent)( We perceive that there is a recently developed assumption on the part of the patent bar that Federal Rules of Civil Procedure discovery somehow is in vogue in interference cases before the board. We believe it worthwhile to re-emphasize that additional discovery under Rule 687(c) is not discovery under the Federal Rules of Civil Procedure. (Emphasis added)). Shiokawa v. Maienfisch, 56 USPQ2d 1970, 1974 (BPAI 2000)(informative; binding)( Fishing expeditions are not authorized by the additional discovery provisions of 37 CFR 1.687(c). To perhaps beat a dead horse, we again remind counsel that additional discovery under the interference rules is not commensurate in scope with discovery under the Federal Rules of Civil Procedure. (Emphasis added)). 13

14 BACK TO THE FUTURE Additional Discovery in AIA Proceedings Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC, IPR , Paper No. 26 at 6-7 (PTAB, Mar. 5, 2013). More Than A Possibility And Mere Allegation Litigation Positions And Underlying Basis Ability To Generate Equivalent Information By Other Means Easily Understandable Instructions Requests Not Overly Burdensome To Answer Bloomberg, Inc. et al. v. Markets-Alert Pty Ltd., CBM , Paper No. 32 (PTAB, May 29, 2013) ( Discovery Factors for Covered Business Method Patent Review ) 14

15 Board Practitioner s Perspective on Obtaining Additional Discovery Tell a good story Have some evidence in hand Explain how limited discovery will timely advance the case Not overly burdensome DON T GET GREEDY! 15

16 THANK YOU 16