Tag Archives: discovery

The PTAB has rules for sealing evidence, but they are different from those in district court, like much else at the PTAB. Both parties in Google Inc. v. Summit 6 LLC, IPR2015-00806, got tripped up by them.

In district court, information designated by a party as confidential is treated as such by court until that designation is challenged by the opponent and ruled on by the judge.  … More

In Silicon Laboratories v. Cresta (IPR2014-00809), both parties relied heavily upon expert testimony to construe key claim terms.  Petitioner Silicon Laboratories proffered an expert Declaration with their Petition and second expert Declaration (same expert) with their Reply.  The Patent Owner, Cresta Technology, filed an expert Declaration with their Response.  Both experts were deposed and the deposition transcripts were submitted as evidence.… More

The whole PTAB trial timeline is extremely compressed, but one deadline in particular stands out for its urgency: the Patent Owner’s objections to Petition evidence.  The Patent Owner has only 10 business days from institution to file objections to Petition evidence.  37 § 42.64(b)(1).  That includes anything from the preliminary stage of the proceeding, and it is the Patent Owner’s only opportunity to preserve its right to seek exclusion of the evidence in question.… More

There are several reasons why the Board rarely grants motions to exclude evidence:

1. Weight, not admissibility.  The opponent’s objections to the evidence usually go more to the weight to be accorded the evidence (i.e., how much it contributes to or detracts from a preponderance), not admissibility (i.e., whether a provision of the Federal Rules of Evidence bars its consideration).
2. Expert judges.  …

More

Don’t go to the trouble of putting on expert testimony without giving the PTAB basis to rely on it.

Patent Owners use expert witnesses in PTAB proceedings for one basic purpose: to undermine the Petitioner’s case for unpatentability.  Expert witnesses can do this in two ways: by refuting the Petitioner’s evidence, and by introducing new evidence that dilutes the Petitioner’s evidence for unpatentability to less than a preponderance. … More

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.… More