PTAB Shows a Willingness to Intervene in Deposition Disputes

10929882_sExperienced district court litigators are reluctant to “call the judge” when a dispute arises during a deposition. Judges do not want to take the time to deal with mundane discovery disputes and parties do not want to get on the wrong side of the judge. The Office Patent Trial Practice Guide bucks this trend, explaining that “[t]he Board encourages the use of conference calls to raise and resolve issues in an expedited manner.” Id. at 48758. We think lawyers are still reluctant to make that call, but experience is showing that the Board is willing to intervene to settle procedural matters.

For example, in Toyota Motor Corp. v. American Vehicular Sciences LLC, IPR2013-00424, Patent Owner asked the Board to limit cross-examination of its expert witness by prohibiting questions directed to whether a feature would have been obvious to one with ordinary skill in the art. Paper 33 at 2. The Board granted the request.

In the Petition, Petitioner relied on a particular prior art reference as disclosing the claimed feature, not as rendering that feature as obvious. Petitioner argued that “obviousness, inherent disclosure, and the understanding of ordinary skill in the art…are inter-mingled as one integral discoverable topic.” Id. at 3. The Board, however, disagreed stating the Petitioner knew the difference between the separate concepts and that they topics were not one and the same. Additionally, the Board found Petitioner has no reason to inquire about the obviousness in light of that feature based on the specific grounds instituted for trial, the arguments in the petition, and absence of testimony in the expert witness’s declaration regarding obviousness of the feature. Id.

In short, deposition combatants take note – the Board is showing both a willingness to intervene in discovery disputes and to limit the testimony of witnesses to only that which is at issue in the IPR proceeding.

Objection to Scope of an Inter Partes Review Should Be Made in Preliminary Response

As forecasted in an earlier post, the PTAB’s “Conduct of the Proceedings” Order from Inter Partes Review No. IPR2012-00022 has three components of interest and upon which we are reporting in three separate posts.  The second facet of that Order relates to the scope of an Inter Partes Review proceeding and when any objections to the scope should be raised.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]35 U.S.C. §311(b) — Scope.–A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.[/pullquote]

More particularly, the patent owner, Isis Innovation, Ltd., made a request to the PTAB that certain portions of the IPR petition be stricken because those portions discussed the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012).  Per Isis, the Mayo decision relates strictly to subject matter eligibility under 35 U.S.C. §101 and, because Inter Partes Review proceedings are limited to prior art issues under §§102 and 103 (and only documentary evidence, at that), any mention of Mayo must, necessarily, be outside the scope of the present IPR proceeding. 35 U.S.C. §311.

Again showing its bent to simplify and consolidate Inter Partes Review proceedings (and concurrently avoid extensive motion practice), the PTAB denied the request to strike the portions of the IPR petition that mentioned Mayo.  Instead, per the PTAB order, any challenge to the portions of the petition that Isis deems inappropriate should be brought in the Patent Owner Preliminary Response.  As with Part I of the “Conduct of the Proceedings” Order, stay tuned….