Takeaway: Deposition of a reference’s author may not be warranted where a party’s expert will provide testimony regarding how a person of ordinary skill in the art would have understood the reference and testimony of the author would carry no extra weight.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion to compel routine discovery or, in the alternative, authorization to file a motion for additional discovery.

The Board denied Patent Owner’s motion to compel routine discovery because the Board did not consider the requested discovery to be routine, as defined by the Rules. Specifically:

[Patent Owner] seeks the testimony of Dr. Daniel Andressen, in the form of live testimony during a deposition. Such information, however, cannot be “served,” as set forth in our Rule pertaining to routine discovery. Nor can live testimony be “inconsistent” with a position of a party until that testimony is provided during a deposition. Thus, the language and context of the Rule strongly supports the conclusion that “inconsistent information” routine discovery is directed toward documents and things, as opposed to live deposition testimony.

Because the requested discovery was found to not be routine discovery, the Board found that Patent Owner could not prevail on a motion to compel, and therefore denied authorization to file the motion.

Alternatively, Patent Owner sought additional discovery. In addressing the Garmin factors, Patent Owner “explain[ed] that it was in possession of evidence that Dr. Andressen had characterized the SWEB reference differently in the past than [Petitioner] is currently characterizing it to the Board in this inter partes review.” According to Patent Owner, “this evidence would be useful to the Board in interpreting the disclosure of the SWEB reference from the perspective of a person of ordinary skill in the art.” However, “[u]pon questioning by the panel, [Patent Owner] conceded that the testimony of the author of a reference does not have particular significance, but rather is indicative of the understanding a person of ordinary skill in the art would have had of the disclosure of the reference.” As such, the Board concluded that Patent Owner could not satisfy the interests of justice requirement, and denied authorization because “the information sought may be generated by other means.” Specifically, Patent Owner “stated to the Board that it is retaining its own expert, who will provide testimony regarding how a person of ordinary skill in the art would have understood the SWEB reference” and admitted that “the testimony of Dr. Andressen would carry no extra weight merely because he is the author of SWEB.”

Accordingly, the Board denied authorization regarding both requests for discovery.

Microsoft Corporation v. Parallel Networks Licensing, LLC, IPR2015-00483, IPR2015-00485
Paper 24: Order on Conduct of the Proceedings
Dated: September 29, 2015
Patents: 5,894,554; 6,415,335
Before: Kevin F. Turner, Jeremy M. Plenzler, and Christopher L. Crumbley
Written by: Crumbley