Takeaway: A Petitioner or Patent Owner can obtain authorization from the Board to apply for a subpoena from a United States District Court for testimony and documents of an entity that is not a party to the proceeding, if the Petitioner or Patent Owner (1) identifies, as specifically as possible, what testimony and documents it seeks from the third party, (2) explains why such information is relevant and needed at this stage in the proceeding, (3) describes all efforts made by Petitioner to obtain the information outside the use of a subpoena, and (4) demonstrates more than a possibility that it will obtain the evidence it seeks.

In its Order, the Board granted Petitioner authorization to apply for a subpoena from the Clerk of the United States District Court for the district where the testimony of Oracle Corporation, which is not a party of this proceeding, is to be taken limited to the document request and deposition request submitted in this proceeding as Exhibit 1015. The Board also granted Patent Owner permission to attend the deposition and cross-examine the witness, but only regarding the subject matter of the direct testimony of the witness.

Petitioner had sought testimony and production of documents related to whether one of the asserted prior art references in this proceeding, Oracle Si® Application Developer’s Guide – XML, Relase 3 (8.1.7) (Sept. 2000) (“Oracle reference”), qualifies as a “printed publication” under 35 U.S.C. § 102(b). In particular, Petitioner requested “[d]ocument(s) sufficient to show” that the Oracle reference “was available to the public in September 2000.” Under the Rules of Practice for Trials Before the Patent Trial and Appeal Board, Final Rule, 77 Fed. Reg. 48,612, 48,622 (Aug. 14, 2012), “[a] party in a contested case may apply for a subpoena to compel testimony in the United States, but only for testimony to be used in the contested case.

Petitioner provided that it “has uncovered numerous documents evidencing that the Oracle reference is in fact a prior art printed publication,” and that it requests documents and testimony “narrowly-tailored to address two issues: the authenticity and publication date of the Oracle reference.” Patent Owner opposed the motion because: “(1) Petitioner needed to prove the prior art status of the Oracle reference in the Petition, (2) Patent Owner is prejudiced by Petitioner serving supplemental evidence after the March 12, 2015 due date, and Petitioner has not shown that its request is in the interest of justice.”

The Board found that Petitioner’s Exhibit 1015 and its representations provided sufficient specificity regarding the testimony and documents sought. Further, the Board found that Petitioner had shown sufficiently why the information regarding the date of first public availability of the Oracle reference is relevant and needed at this stage of the proceeding. Petitioner had attempted to obtain the information outside of the use of a subpoena, but a former Oracle employee did not have sufficient recollection without access to Oracle records and Oracle’s legal department refused to provide the requested evidence absent a subpoena. The Board also found that Petitioner had established more than a possibility that it will obtain the evidence it seeks, because the Oracle reference provides an Internet Web Site address for the public to purchase the document and the document includes a copyright date and part number. Additionally, Petitioner submitted a declaration by a former Oracle employee stating that a copy of the Oracle reference would have been available for purchase at the expected date. Accordingly, the Board found that Petitioner had provided a sufficient showing to merit an order to compel the requested testimony

Patent Owner also argued that it is prejudiced by Petitioner serving supplemental evidence after the March 12, 2015 due date. However, the supplemental evidence is limited to responding to Patent Owner’s objection, and the Due Dates were adjusted to give Patent Owner sufficient time to respond.

International Business Machines Corp. v Intellectual Ventures I LLC, IPR2014-01385
Paper 15: Order Granting Petitioner’s Motion for Authorization to Compel Testimony and Production of Documents
Dated: March 27, 2015
Patent: 7,984,081 B1
Before: Joni Y. Chang, Jennifer S. Bisk, and Barbara A. Parvis
Written by: Parvis