Parties harness the PTAB’s authority to compel third parties only in rare situations.
The PTAB’s tight trial schedule allows no room for protracted discovery fights. That usually doesn’t matter, because parties rarely seek more than routine cross-examination of the opponent’s witnesses. And even when they seek other evidence, such as when investigating a real-party-in-interest issue, the evidence sought usually is in the control of a party to the proceeding.
But when essential evidence is in the control of a third party, a subpoena may be necessary to obtain access to it. It’s not necessarily that the third party refuses to cooperate; many companies’ policies require a subpoena or some other court order to produce documents or witnesses.
Subpoenas at the PTAB come into play typically in a few scenarios:
- A party cannot voluntarily produce a witness on whose declaration it relied.
This might occur when:
- the witness is no longer under the other party’s control due to a change in employment, or
- the witness’s declaration was lifted from another proceeding without consent and re-filed in the present proceeding.
- A party questions the publication status of a document prepared by a third party.
This occurs typically when the Patent Owner argues that the Petitioner failed to prove that a document qualifies as a printed publication (as required by 35 U.S.C. § 311(b)), and the Petitioner seeks to obtain evidence of publication from the entity responsible for the document.
- The Patent Owner questions whether a third party should have been identified as a real party-in-interest.
The PTAB does not issue subpoenas directly. Rather, it authorizes a party to obtain a subpoena from the relevant district court pursuant to 35 U.S.C. § 24.
Parties should take special care to craft a winning motion for subpoena the first time, due to the short deadlines and importance of the evidence sought. A successful motion for authorization to obtain a subpoena requires the movant to (1) establish that it is entitled to the evidence, and (2) show that it’s tried other ways of obtaining the evidence. Part (1) is satisfied automatically if the evidence falls within routine discovery, because parties are required to produce or provide access to this type of evidence. Entitlement also may be shown by way of a motion for additional discovery (easier said than done!). Satisfying part (2) may be as simple as asking the third party for the discovery before resorting to a subpoena.
PTAB Decisions on Subpoenas
A number of PTAB decisions in subpoena motions are instructive:
Mitsubishi Plastics, Inc. v. Celgard, LLC, IPR2014-00524 (Paper 44) (Apr. 13, 2015): Patent Owner’s witness refused to submit voluntarily to cross-examination after leaving Patent Owner’s employment. Petitioner sought to compel discovery, which Patent Owner did not oppose. The Board granted the Petitioner’s motion to compel the witness’s cross-examination and authorized the Petitioner to obtain a subpoena from the United States District Court.
Farmwald v. Parkervision, Inc., IPR2014-00946 (Paper 36) (June 9, 2015): Patent Owner sought discovery from a third party it suspected was an unnamed real party-in-interest. The Board authorized the Patent Owner to file a motion to obtain a subpoena. The Board subsequently denied the motion in a sealed order.
Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, IPR2014-00552 (Paper 29) (Feb. 11, 2015): The Patent Owner sought to compel discovery from a third party (an earlier owner of the patent) in support of an effort to disqualify a prior-art reference under the CREATE Act (35 U.S.C. § 103(c)). The Patent Owner also sought to compel the cross-examination of the listed inventors on the patent. The Petitioner did not oppose the request but did seek to limit the scope of the discovery requests. Once the parties had agreed on a form and scope of subpoena, the Board authorized the Patent Owner to obtain the subpoenas from the District Court.
Alternative Legal Solutions, Inc. v. Employment Law Compliance, Inc., IPR2014-00562 (Paper 22) (Dec. 23, 2014): The Patent Owner sought to compel the production of documents and testimony from several third party individuals. The employer of the third party individuals refused to make them available without subpoenas. The Board authorized the Patent Owner to file a motion to compel discovery and to obtain subpoenas. On consideration of that motion, however, the Board determined that the information sought amounted to additional discovery, that the Patent Owner had not met the burden for additional discovery, i.e., showing that the discovery sought was “in the interest of justice” (37 C.F.R. § 42.51(b)(2)), and denied the motion to compel.
Smart Modular Techs. Inc. v. Netlist, Inc., IPR2014-01372 (Paper 24) (July 7, 2015): The Patent Owner filed with its Response a deposition transcript from a witness in a different IPR. The Petitioner objected to this evidence, and the Patent Owner sought to respond to the objection with supplemental evidence in the form of compelled testimony from the witness. The Board denied the Patent Owner’s request on the basis that the need to resolve admissibility issues with the witness’s testimony was foreseeable by the Patent Owner and should have been addressed before filing the Patent Owner Response.
IBM v. Intellectual Ventures I LLC, IPR2014-01385 (Paper 26) (May 27, 2015): Both the Petitioner and the Patent Owner sought to compel discovery from an employee of a third-party (Oracle Corp.) regarding the publication status of a document the Petitioner had relied on in its unpatentability challenges. The Board granted both requests, taking care to note Oracle’s right to seek limits on the scope of compelled testimony of its employee.
Toshiba Corp. v. Optical Devices, LLC, IPR2014-01445 (Paper 14) (May 8, 2015): Petitioner sought authorization to compel testimony and document production from a third-party witness regarding the publication status of a document the Petitioner had relied upon on in its unpatentability challenges. The Board denied the request because the Petitioner had not ascertained whether the witness in question could provide relevant testimony and documents, nor whether the witness would do so voluntarily.
Chicago Mercantile Ex’g, Inc. v. 5th Market, Inc., CBM2015-00061 (Paper 24) (Nov. 17, 2015): The Patent Owner objected to one of the documents the Petitioner had relied on in its unpatentability challenges on the basis that the Petitioner had not shown that the document was publicly accessible. The Petitioner responded to the objection by serving the declaration of a third-party witness from another proceeding regarding the public accessibility of the document. Petitioner then sought to compel test testimony of this witness, who was not available voluntarily. Patent Owner did not oppose this request and, indeed, proposed to expand the cross-examination beyond the scope of the witness’s declaration. The Board authorized the subpoena but denied Patent Owner’s proposal to expand the scope, ruling the expansion a request for additional discovery that Patent Owner had not shown was necessary in the interest of justice.