Scope of Discovery

Authored by Steven S. Yu, M.D.

Discovery rulings in IPR proceedings so far reveal that the APJs are resisting any attempt at expansive litigation-type discovery. Two of the recent discovery rulings relate to the patent holder’s requests relating to objective evidence of non-obviousness. In Garmin International Inc. v. Cuozzo Speed Technologies LLC (IPR2012-00001), patent holder Cuozzo sought discovery for evidence of commercial success brought on by Garmin’s use of the patented feature. In particular, Cuozzo sought interrogatory answers, documents, as well as the deposition of a corporate representative (in the manner of a 30(b)(6) deposition under the Federal Rules) for information about the design, development, and commercialization of the patented feature in Garmin’s products, as well as Garmin’s own views about the commercial success attributable to the patented feature. The discovery requests were denied for a number of reasons, including Cuozzo’s failure to demonstrate a nexus between commercial success and the patented features.

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Stays of Litigation and ITC Investigations Pending IPRs

Authored by John R. Kenny and Scott Forman

District courts have ruled on a number of motions to stay litigation pending inter partes review (“IPR”), granting at least five unopposed, joint motions or stipulated orders; granting at least eleven opposed motions; denying at least twelve opposed motions; and partially granting at least five opposed motions (i.e., staying the case only until the PTAB decides whether to institute the IPR). In deciding these stay motions, district courts have used the three factor test previously set forth for stays pending reexamination proceedings:

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PTAB Issues First Final Written Decision – Invalidates Challenged Claims Under 35 U.S.C. § 101

Authored by Michelle Carniaux and Michael E. Sander

On June 11, 2013, the Patent and Trial Appeal Board (“PTAB”) issued its first ever Final Written Decision in a post grant review proceeding. In an expedited trial, after oral arguments, the PTAB found that the claims of U.S. Pat. No. 6,553,350 challenged in a covered business method patent review are invalid under 35 U.S.C. § 101. See CBM2012-00001, Paper 70 (June 11, 2013).

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Prosecution Bars and IPR

Authored by Michelle Carniaux and Bryan Nese

A recent decision out of the Eastern District of Wisconsin addressed the question of whether a prosecution bar in a protective order prevents a patent owner’s litigation counsel from participating in an inter partes review (“IPR”) of the subject patent. See Prolitec Inc. v. ScentAir Techs., Inc., Case No. 12-C-483, slip op. at 9 (E.D. Wis. May 17, 2013). In Prolitic Inc. v. ScentAir, the relevant portions of the protective order stated as follows:

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