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Articles Posted in Discovery

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Fujitsu v. Tellabs: Fujitsu Appeal’s Decision on Motion to Compel and, After It Loses on Appeal, District Court Orders a Civil Penalty Which Doubles Each Day Documents Are Not Produced

In this patent infringement action, the district court granted a motion to compel filed by Tellabs against Fujitsu. Fujitsu then filed a petition for a writ of mandamus with the Federal Circuit to overturn the decision of the district court. The Federal Circuit promptly denied the writ of mandamus as…

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The PTAB finds that the petitioner did not show that a patent claiming internet-based transactions is not a technological invention and denied CBM review on that basis

In GSI Commerce Solutions, Inc. v. Lakshmi Arunachalam, GSI filed a petition seeking covered business method patent review of U.S. Patent No. 8,346,894 relating to “facilat[ing] real-time two-way transactions, as opposed to deferred transactions, e.g., e-mail.” CBM2014-00101. The Petitioner filed its petition seeking invalidity based on lack of written description,…

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Court Denies Motion to Compel Deposition Testimony on Overly Broad 30(b)(6) Topics and on “Contention” Topics

In this patent infringement action brought by Trustees of Boston University (“BU”), BU alleged that defendants infringed U.S. Patent No. 5,686,738 (the “‘738 Patent”), which centers on light emitting diodes (“LEDs”) and the technology behind them. BU moved for an order compelling defendant Epistar Corporation (“Epistar”) to designate new Rule…

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PTAB – Trulia and Zillow possible merger is not a sufficient basis for extending the 12 month period to complete the trial

In Trulia, Inc. v. Zillow, Inc., Trulia filed a petition seeking covered business method review of U.S. Patent No. 7,970,674 relating to automatically determining a current value for a real estate property. CBM2013-00056. On March 10, the Board instituted a trial on the ‘674 patent and set a hearing date…

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The PTAB rejects Microsoft’s attempt to institute an IPR proceeding almost 7 years after being served with a complaint involving the patent-at-issue

In Microsoft Corporation v. Virnetx Inc., Microsoft filed a petition seeking inter partes review of U.S. Patent No. 7,188,180 (“the ‘180 patent”) on May 19, 2014. The ‘180 patent was asserted in a complaint for VirnetX Inc. v. Microsoft Corp., Case No. 6:07-cv-00080 (E.D. Tex. filed April 5, 2007) (“the…

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Court stays litigation pending IPR challenge, but requires that Defendants agree to be estopped from asserting any invalidity contention that was “actually raised and finally adjudicated” in the IPR proceedings

In Coho Licensing LLC v. Glam Media, et al., Coho filed suits against defendants AOL Inc. (“AOL”), Glam Media Inc., Ning Inc., LinkedIn Corp., Rovi Corp., and Twitter, Inc. (collectively referred to as “Defendants”). On May 16, 2014, AOL filed petitions for IPR challenging the validity of all the claims…

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Failure to Make A Third Party Witness Available May Result In The Testimony Being Ignored

In the Mexichem Amanco Holdings S.A. de C.V. v. Honeywell International, Inc., the Patent Owner moved for additional discovery to depose a third party witness whose declarations were relied upon by Petitioner in its Reply to the Patent Owner’s Response. The witness originally submitted declarations in reexamination proceedings involving a…

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Parent Company Ordered to Produce Documents in Response to Request to Subsidiary Where Parent and Subsidiary Shared Servers and Databases

Plaintiff Dri-Steem Corporation (“Dri-Steem”) sought production of documents in the possession and control of the defednant’s parent company National Environmental Products, Ltd. (“National”), via its wholly-owned subsidiary NEP Inc., dba Neptronic (“NEP”). Dri-Steem asserted that NEP has custody and control of the requested documents because it can secure them from…

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PTAB to Apple: No Third or Fourth Bite at the Apple

In inter partes proceeding Apple Inc. v. Rensselaer Polytechnic Institute et al., IPR2014-00320, Petitioner Apple sought a second request for rehearing, before an expanded panel of the PTAB, on the Board’s decision not to institute an inter partes review of RPI’s U.S. Patent No. 7,177,798 (“the ‘778 Patent”). The Board…

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PTAB’s Guidelines for Foreign Language Depositions

In the Ariosa Diagnostics v. ISIS Innovation Limited inter partes review, the PTAB set for the guidelines for taking depositions in a foreign language as required by 37 C.F.R. § 42.53(c). In addition to the requirement of 42.53(c) that the party calling the witness must initiate a conference with the…

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