In GEA Process Engineering, Inc. v. Steuben Foods, Inc., (IPR2014-00041), Paper 22 (IPR2014-00043), Paper 23, (IPR2014-00051), Paper 21 (IPR2014-00054), Paper 18 (IPR2014-00055), Paper 14 (April 15, 2014), the patent owner believed that it had engaged petitioner’s expert before petitioner, and sought to get petitioner to produce documents that the patent owner provided to the expert.  The Board explained that the Office does not have authority to issue a subpoena for the production of documents. Production of documents is compelled through a subpoena from a United States District Court, pursuant to 35 U.S.C. § 24:

The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office, shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena. The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent and Trademark Office.

Every witness subpoenaed and in attendance shall be allowed the fees and traveling expenses allowed to witnesses attending the United States district courts.

A judge of a court whose clerk issued a subpoena may enforce obedience to the process or punish disobedience as in other like cases, on proof that a witness, served with such subpoena, neglected or refused to appear or to testify. No witness shall be deemed guilty of contempt for disobeying such subpoena unless his fees and traveling expenses in going to, and returning from, and one day’s attendance at the place of examination, are paid or tendered him at the time of the service of the subpoena; nor for refusing to disclose any secret matter except upon appropriate order of the court which issued the subpoena.

The Board said that Section 42.52 provides procedures for compelling the production of documents. 37 C.F.R. § 42.52. Section 42.52(a) requires the party seeking to compel production of documents to first obtain authorization from the Board; otherwise, the compelled evidence will not be admitted in the proceeding:

§ 42.52Compelling testimony and production.

(a)Authorization required. A party seeking to compel testimony or production of documents or things must file a motion for authorization. The motion must describe the general relevance of the testimony, document, or thing, and must:

(1) In the case of testimony, identify the witness by name or title; and

(2) In the case of a document or thing, the general nature of the document or thing.

.

In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00584, Paper 34 (April 14, 2014), the patent owner filed observations on cross-examination that exceeded the 15 pages permitted by 37 C.F.R. § 42.24(a)(1)(v).  The Board expunged the filing, and gave the patent owner two days to file a substitute, limited to removing material from the original paper and not making any substantive changes or additions.

In Amkor Technology, Inc. v. Tessera, Inc., IPR201-00242, Paper 117, (April 14, 2014), the patent owner filed a terminal disclaimer of the remainder of the patent term (which was going to expire later in the year), to force the Board to apply the construed meaning of the claims, instead of the broadest reasonable interpretation (arguing that expiration of the patent prevented use of the BRI).  The patent owner believed that when the contrued meaning is applied, the inter partes review should be terminated.  The Board authorized the parties to brief the issues.

New Filings

FLIR Systems, Inc., filed IPR 2014-000608 challenging claims 1-58 of U.S. Patent No. 8,426,813, assigned to Furry Brothers LLC/ Leak Systems, Inc.

FLIR Systems, Inc., filed IPR 2014-000608 challenging claims 1-7 and 9-20 of U.S. Pat. No. 8,193,496, assigned to Furry Brothers LLC/ Leak Systems, Inc.

In addition to handing a patent owner the first outright win in an inter partes review, in ABB Inc. v. Roy-G-Biv Corp., IPR2013-00062 and IPR-00282, Paper 84 (April 11, 2014), and ABB Inc. v. Roy-G-Biv Corp., IPR2013-00074 and IPR-00286, Paper 80 (April 11, 2014), the Board outlined the proper way handle a reply or rebuttal evidence that exceeds its proper scope (hint: it’s not a motion to exclude).  The Board said that If an issue arises regarding whether a reply argument or evidence in support of a reply exceeds the scope of a proper reply, the parties should contact the Board to discuss the issue.

In a heartening (to patent owners) reminder that invalidation in an IPR is not automatic, in ABB Inc. v. Roy-G-Biv Corp., IPR2013-00062 and IPR-00282, Paper 84 (April 11, 2014), the Board found that ABB failed to  show that claims 1 -10 of U.S. Patent No. 6,516,236 were invalid.  In a decision the same day in ABB Inc. v. Roy-G-Biv Corp., IPR2013-00074 and IPR-00286, Paper 80 (April 11, 2014), the patent owner repeated the feat, saving claims16-30 and 46-59 of U.S. Patent No. 8,073,557.

In part petitioner came up short, by not adequately rebutting the testimony of the patent owner’s expert.  In an interesting tactic, during cross examination of petitoner’s expert, patent owner presented a list of disagreements with patent owner’s experts, which petitioner’s expert identified as “accurate,” but which did not include four claim elements that patent owner’s expert testified were missing from the prior art, causing the Board to conclude that the rebuttal testimony did not establish that the testimony of patent owner’s expert should not be credited.  In the latter decision, the Board also criticized petitioner for failing to specifically identify any specific element or feature disclosed in prior and and instead arguing what “ordinary artisans would recognize.”  Argument is not a substitute for disclosure.