Archive for the ‘Expert’ Category

PTAB Provides More Guidance on Discovery

Sunday, July 21st, 2013

On March 5, 2013, the Patent Trial and Appeal Board (PTAB or Board) provided guidance to the bar concerning routine discovery and additional discovery.  (See paper 26 in Garmin v. Cuozzo, IPR2012-00001) This decision set forth five factors which are important in determining what constitutes discovery satisfying the “necessary in the interest of justice” standard under 35 U.S.C. § 316(a)(5).  This decision is but one listed on the PTAB’s web page of Representative Orders, Decisions, and Notices, and as a result it is widely known and referenced by post-grant practitioners.

On July 18, 2013, in this same IPR, the PTAB provided yet more guidance concerning discovery.  (IPR2012-00001, paper 50) This time the guidance relates to depositions, and in particular, the circumstances where corrective filings of deposition testimony may be filed by counsel.

Over a month after cross-examinations of its experts, Cuozzo (the Patent Owner) filed errata sheets in an attempt to correct the cross-examination testimony by its experts.  A joint telephone conference was requested by the parties a few weeks later to resolve their dispute regarding the propriety of the filing of these errata sheets.  The Board conducted a telephone conference on July 16, 2013 and issued an order expunging the errata sheets because they were filed without authorization and were submitted after Garmin (Petitioner) had already responded to the (allegedly erroneous) expert testimony for Cuozzo.  The request also came after Garmin’s window of opportunity to conduct further cross examination of Cuozzo’s witnesses or to submit a revised reply to Cuozzo’s response or opposition to Cuozzo’s motion to amend claims.

The Board reminded practitioners that such requests must be authorized before a motion is filed:

The rules for an inter partes review do not provide for the filing of errata sheets in connection with the deposition testimony of a witness. Thus, a party intending to file an errata sheet, for whatever purpose, especially if it is to change the substantive testimony of a witness, must contact the Board and obtain prior authorization before doing so. One of the comments to the proposed rules for implementing inter partes review, post grant review, and covered business method patent review inquired about errata sheets and what is or is not acceptable in an errata sheet, and the Office’s response is that the rules do not provide for the submission of errata sheets and that a party who believes an errata sheet is necessary may request a conference call with the Board. Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decision; Final Rule, 77 Fed. Reg. 48612, 48642 (Aug. 14, 2012)(Response to Comments).

IPR2012-00001, paper 50 at page 3.

The Board did not absolutely rule out the possibility of authorizing entry of errata sheets in future cases, but it set forth this guidance:

We take this opportunity to state that unless unopposed by the other party, a request to make a material change to the substance of cross examination testimony is unlikely to be successful no matter when the request is made. Error in transcription is a different matter.

IPR2012-00001, paper 50 at page 4.

The Board emphasized that a party has the ability on redirect to cure any perceived deficiency of testimony or to elicit a more complete answer.

A picture of future PTAB practice is emerging as more decisions are rendered by the Board.  For an advantage in these proceedings, clients will want counsel that is versed in all of the technical aspects of the challenged invention to understand it and to be able to properly question witnesses and clarify their testimony.  Counsel should also be familiar with Patent Office practice to understand what the Board will allow procedurally, and the information that the Board needs to find in the client’s favor.  Counsel also should have litigation experience and deep legal knowledge to properly grasp the impact of testimony and to make sure that the record is as clear and complete as possible for the Board and any Federal Circuit appeal that may follow.

Stays Pending Reexamination and Experts Subject to a Prosecution Bar

Thursday, July 14th, 2011

In Interval Licensing LLC v. eBay, Inc., et. al., 2-10-cv-01385 (WAWD),  Interval Licensing (Interval) filed a motion for reconsideration of an earlier order by the Court to stay the litigation pending reexamination.  On July 12, 2011, Judge Marsha J. Pechman denied the motion.

The order states that motions for reconsideration are disfavored in that district and that the court will ordinarily deny them absent a showing of manifest error in the prior ruling or a showing of new facts or legal authority which could not have been brought to its attention with reasonable diligence.  The order found that the facts presented by Interval were not new because they could have been presented in the original opposition to the stay filed by Interval.  For example:

  • Interval chose to rely on its March 28, 2011 brief when filing its opposition motion on June 6, 2011, rather than to supplement the June 6th filing for reasons that are not clear.
  • Interval argued that it performed substantial work on briefing Markman issues and discovery, yet failed to show why this work would be lost pending the outcome of the reexamination.
  • Interval argued that the experts it retained to review source code will be prejudiced by virtue of the stay because they agreed to a patent prosecution bar until one year after resolution of the case.   But the protective order was entered on April 14, 2011 and Interval failed to point out this provision in its opposition to the motion to stay.  Also, the Court found the prejudice to the experts was not a factor.  “Presumably, the restriction to which the experts choose to submit is more than offset by the benefit of generating substantial income by rendering expert services.”
  • Interval also took issue with the Court’s statement that “Defendants have presented a substantial body of prior art that they believe will reshape the four patents at issue in this litigation.”  Interval noted that the examiner granted reexamination on fewer references than the Defendants reported.  However, since the examiner is not precluded from relying on other references, this does not show manifest error.

So what are the takeaways from all of this?

  1. If you want to oppose a motion to stay, present all of your facts in your original motion.  Be thorough.
  2. If you are going to assert that a stay is detrimental due to preparation (e.g., Markman analysis, or discovery), clearly describe how the stay is prejudicial to the case. 
  3. If you are an expert involved in a matter with a prosecution bar, consider the possibility that a stay of the matter may preclude your activities in that technology area for years if a stay pending reexamination is ordered.  Consider the possibility that your exposure to confidential material could be minor at best, yet you could be precluded for the duration of the stay (which may also end in dismissal of the case).