Takeaway:  An unauthorized request for documents exceeding an order by the Board may be treated by the Board as a new motion for additional discovery subject to the modified Garmin factors.

In its Decision, the Board authorized Petitioner to file a Motion to Apply for a Subpoena under 35 U.S.C. § 24 to Compel the Testimony of Mr. Jonathan C. Wheeler pursuant to 37 C.F.R. § 42.52(a).  Patent Owner had not opposed this Motion; instead, it had requested various limitations on the scope and logistics of the sought-after testimony.

According to the Board, a dispositive issue in this proceeding was whether a Memorandum from the Commodity Futures Trading Commission (“CFTC”) was a prior art printed publication under 35 U.S.C. § 102(b).  Petitioner had indicated that it was intending to rely on the Declaration of Mr. Wheeler, which Petitioner had “served as supplemental evidence under 37 C.F.R. 42.64(b)(2) in response to evidentiary objections timely filed by [Patent Owner] under 37 C.F.R. § 42.64(b)(1).” As stated in the Decision, “Mr. Wheeler is a paralegal specialist at the Commodities Future Trading Commission—a third party to this proceeding” who Petitioner had indicated was “not available voluntarily to offer further testimony.” Petitioner had intended to rely on Mr. Wheeler’s testimony to show that CFTC was publicly available prior to the earliest effective filing date for the challenged ‘387 patent.

The Board authorized the issuance of the requested subpoena so that Petitioner “can make Mr. Wheeler available for cross-examination regarding the testimony and subject matter in his Declaration.”  Citing Marvell Semiconductor, Inc. v. Intellectual Ventures LLC, IPR2014-00553, (PTAB Apr. 8, 2015), the Board indicated that it was “not inclined to deprive the parties of the opportunity to develop Mr. Wheeler’s testimony regarding this issue through further examination.”

Petitioner had asserted that Mr. Wheeler’s additional testimony should be limited to the matters set forth in his Declaration, and that there be specific time restrictions on when his deposition should take place, and how long it should be.  Patent Owner, in reply, asserted that the subpoena should also request all documents and other information that Mr. Wheeler relied upon in preparing his Declaration.  Patent Owner disagreed with Petitioner’s proposed time restrictions for Mr. Wheeler’s deposition as well.

The Board agreed with Petitioner’s proposed time restrictions for Mr. Wheeler’s deposition.  As for the scope of the Mr. Wheeler’s deposition, the Board found that Patent Owner’s request that the subpoena should include “all the documents and records Mr. Wheeler may have relied upon to prepare his Declaration falls outside of the scope of the Response authorized in the Order [that the Board] entered on November 3, 2015.”  In particular, the Board found that “such a request amounts to a new Motion for Additional Discovery under 37 C.F.R. § 42.51(b)(2)(ii).”  The Board then indicated that if Patent Owner’s request was treated as a new Motion for Additional Discovery under 37 C.F.R. § 42.51(b)(2)(ii), Patent Owner still had “not carried its burden of demonstrating ‘good cause as to why the discovery is needed.’” under 37 C.F.R. § 42.224(b).

Chicago Mercantile Exchange, Inc. v. 5th Market, Inc., CBM2015-00061
Paper 25:  Decision Granting Petitioner’s Motion to Apply for a Subpoena to Compel the Testimony of Mr. Jonathan C. Wheeler
Dated:  November 18, 2015
Patent:  7,024,387 B1
Before:  Michael R. Zecher, Kalyan K. Deshpande, and Georgianna W. Braden
Written by:  Zecher