Takeaway: Deposition transcripts that are relied upon by declarants are routine discovery under 37 C.F.R. § 42.51(b)(1)(i). 

In its Order, the Board determined that Patent Owner could use depositions during the cross-examination of Petitioner’s declarants.  Petitioner’s declarations refer to seven deposition transcripts.  During the call, Petitioner offered to allow Patent Owner to use the entirety of the depositions during cross-examinations, but not the underlying exhibits because Petitioner stated they were not reviewed by the declarants.  The Board agreed that the depositions, but not the underlying exhibits, are routine discovery under § 42.51(b)(1)(i).  The Board noted that Petitioner opened the door to use of the depositions when it filed declarations relying upon their content.  The Board further noted that Patent Owner may question the declarants on what material they reviewed in preparing the declarations.

Under Armour, Inc. v. Adidas AG, IPR2015-00698; IPR2015-00700
Paper 37: Order on Routine Discovery
Dated: March 18, 2016
Patents: 8,092,345 B2; 8,579,767 B2
Before/Written by: Jennifer S. Bisk