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In Butamax Advanced Biofuels, LLC v. Gevo, Inc., the patent owner requested permission to be excused from the oral hearing. The patent owner cited the expense of having counsel prepare for and attend the hearing. Instead, the patent owner preferred to rest on its written response to the petition. The patent owner did not request that the Board cancel the oral hearing, which had been requested only by the petitioner. Having requested the hearing, the Board held that the petitioner had a statutory right to a hearing. The Board also emphasized that a hearing would be helpful to the Board to answer questions it may have regarding the issues presented in the proceeding.

The Board instead raised the possibility of attendance via telephone. The patent owner declined this option again citing the financial burden of preparing for and participating in the hearing. The Board stressed its expectation that “counsel will attend all proceedings which may materially affect [the patent owner’s] interests.” However, the Board allowed that at the hearing counsel for patent owner could choose to rest on the submitted briefs and not make oral argument. The Board also offered to allow backup counsel to attend the hearing in place of its lead counsel.
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Following the district court’s previous order granting a motion to compel against Fujitsu, and Fujitsu’s unsuccessful appeal to the Federal Circuit, the district court ordered sanctions in the form of a civil penalty. As the district court explained, the civil penalty was designed to provide an incentive to motivate the Fujitsu Entities to comply with the district court’s orders.

The district court was less than impressed with Fujitsu’s response. “After stalling for months following Judge Cole’s 7/25/2014 order with meritless objections, overruled by this court on 8/19/2014, and an even more meritless mandamus attempt denied by the Federal Circuit yesterday, Fujitsu’s counsel cavalierly concludes ‘Fujitsu’s Response’ with ‘Fujitsu expects to have the translations ready for production by Friday, October 10, 2014.’
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In an inter partes review Medtronic Inc. et al. v. Troy R. Norred, M.D., the Petitioner sought guidance from the Board regarding the Patent Owner’s objections during the deposition of an expert appearing on behalf of the Patent Owner. According to the Petitioner, the Patent Owner made speaking objections and suggested answer to the witness. For example, petitioner read a representative example of Patent Owner’s objection, which began “‘Objection, misleading . . .’ and then went on to explain at some length that the question was misleading because it asked for a conclusion from the witness based on only a portion of a patent that Patent Owner contends was ‘taken out of context.'”

The Board began its analysis by reciting the Patent Trial Practice Guide’s instructions regarding the proper method of objecting during a deposition:

Consistent with the policy expressed in Rule 1 of the Federal Rules of Civil Procedure, and corresponding § 42.1(b), unnecessary objections, “speaking” objections, and coaching of witnesses in proceedings before the Board are strictly prohibited. Cross-examination testimony should be a question and answer conversation between the examining lawyer and the witness. The defending lawyer must not act as an intermediary, interpreting questions, deciding which questions the witness should answer, and helping the witness formulate answers while testifying.

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3. An objection must be stated concisely in a nonargumentative and non-suggestive manner. Counsel must not make objections or statements that suggest an answer to a witness. Objections should be limited to a single word or term. Examples of objections that would be properly stated are: “Objection, form”; “Objection, hearsay”; “Objection, relevance”; and “Objection, foundation.” Examples of objections that would not be proper are: “Objection, I don’t understand the question”; “Objection, vague”; “Objection, take your time answering the question”; and “Objection, look at the document before you answer.” An objecting party must give a clear and concise explanation of an objection if requested by the party taking the testimony or the objection is waived.

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In Norman IP Holdings v. TP-Link Technologies, Co., et al., the Defendants moved to stay the litigation pending completion of an inter partes review involving the patents-in-suit. The plaintiff did not respond to the motion. Thereafter, the court granted the motion and stayed the litigation pending completion of the IPR involving claim 6 of the ‘597 Patent.

Plaintiff’s complaint alleges ADTRAN infringes U.S. Patent Nos. 5,502,689 (the “‘689 Patent”), 5,530,597 (the “‘597 Patent”), and 5,592,555 (the “‘555 Patent”). Specifically, the plaintiff asserts claims 5 and 6 of the ‘689 Patent, claims 1-6, 10, and 11 of the ‘597 Patent, and claims 10, 12, and 51 of the ‘555 Patent against ADTRAN, the sole remaining defendant at the time the court decided the stay motion. The court noted that there have been 10 petitions for post-grant review of the three patents asserted by Norman. A total of 33 separate claims from the asserted patents have been canceled in the four proceedings that have been completed. The remaining six proceedings were pending at the time of the filing. In concurrent litigation, Norman alleged Nissan North America, Inc. (“Nissan”) infringes the same asserted claims of the ‘689 and ‘597 patents. Nissan filed a petition for IPR as to claim 6 of the ‘597 patent and claims 5 and 6 of the ‘689 patent. On September 23, 2014 PTAB granted Nissan’s petition for IPR as to the asserted claims in the ‘689 and ‘597 patents. During the October 7, 2014 hearing ADTRAN agreed, if the court granted a stay of the present litigation, “to be estopped as to invalidity contentions raised and adjudicated in the [Nissan] IPR proceedings.”
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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 Fujitsu had to establish a “clear and indisputable” right to relief and that it “lack[ed] adequate alternative means to obtain the relief” that it sought. Cheney v. U.S. Dist. Court, 542 U.S. 367, 380-81 (2004) (internal citations omitted).
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In this patent infringement action, the district court issued a sua sponte order requiring plaintiff to show why its inducing infringement claims should not be dismissed as a matter of law. After addressing the United States Supreme Court’s recent decision in Limelight, the district court noted that no single party performed all of the steps of the method in the patent-in-suit.

As noted by the district court, “[e]ach of the method claims presented by the ‘835 and ‘740 patents specifies that some method steps are to be performed by the ‘assisted user,’ while other steps are to be performed ‘at the relay.’ Conceding that no single party actually performs every step of the claimed methods, plaintiffs seek to establish that defendants’ customers (the ‘assisted users’) direct and control defendants in performing those steps to be performed ‘at the relay’ such that the performance of all of the steps of the method can be attributed to the assisted users.”
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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, lack of enablement, indefiniteness and obviousness. On October 7, 2014, the Board denied the CBM review finding that the petitioner failed to establish that the claimed inventions were not technological inventions under 37 C.F.R. § 42.301(a). Notably, the Board’s decision was made without any briefing from the patent owner on this issue, who elected not to file a preliminary response.

In reaching its decision to deny CBM review, the Board rejected the petitioner’s argument that the ‘894 patent does not recite a technological invention because “claim 2 recites only known technologies, such as a processor, a machine readable storage device, a signal, an application, a network, the Web, an object, and a data structure.” The petitioner further argued that the ‘894 patent recites a combination of structures that achieve normal, expected and predictable results by “allowing a user to complete from a Web application the types of transactions he or she can already perform in person.”
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In this patent infringement action, the defendant moved to exclude portions of the plaintiff’s (Dr. Bambos’) expert testimony. Defendant argued that Dr. Bambos lacks familiarity with the infringing products, relied too heavily on someone else to provide him with relevant segments of source code to review, and used the district court’s claim construction to determine how the products work.

In analyzing the motion, the district court noted that “Dr. Bambos never used the allegedly infringing products, but his expert opinion was based on ‘thousands of pages of technical manuals, source code, and depositions transcripts.’ (D.I. 221 at p.1) (See D.I. 221-4 at 3-6; D.I. 221-3 at 2-5). Rule 702 requires that expert testimony be based on “sufficient facts or data.” Dr. Bambos need not use the product if, as here, he has familiarized himself with it in other ways. Reviewing source code and other materials can be sufficient.”
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In Ford Motor Company v. Paice LLC & The Abell Foundation, Inc., Ford filed a petition seeking inter partes review of U.S. Patent No. 8,214,097 relating to a hybrid vehicle having, among other things, both an internal combustion engine and an electric motor. IPR2014-00570. On September 30, 2014, the Board instituted a trial on the ‘097 patent, finding that Ford’s petition demonstrated that there was a reasonable likelihood that it would prevail in showing unpatentability of claims 30-33, 35, 36 and 39 of the ‘097 patent. The Board denied review (on both anticipation and obviousness grounds) as to claim 38, which requires that the battery supply power to the electric motor “at a peak of at least 500 volts under peak load conditions.”

In reaching its decision to institute a trial, the Board rejected Paice’s argument that Ford is barred or estopped under 37 C.F.R. § 42.104(a) from requesting an inter partes review due to an alleged breach of an arbitration agreement between the parties. “According to Paice, the arbitration agreement includes ‘unambiguous terms’ that purportedly limit Ford’s ability to ‘challenge the claims of the ‘097 patent.'” Paice argues that Ford is in breach of those terms and therefore failed to demonstrate that it had the requisite standing to file the instant petition.
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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 30(b)(6) deponents on certain deposition topics.

As explained by the court, Rule 30(b)(6) requires the noticing party to describe the topics of examination with “reasonable particularity.” Fed. R. Civ. P. 30(b)(6). If the noticing party does not describe the topics with sufficient particularity or if the topics are overly broad, the responding party is subject to an impossible task. McBride v. Medicalodges, Inc., 250 F.R.D. 581, 584 (D. Kansas 2008). To avoid liability, the noticed party must designate persons knowledgeable in the areas of inquiry listed in the notice. Id. Accordingly, if the noticed party cannot identify the outer limits of the topics noticed, compliant designation is not feasible. Id.; see also Newman v. Borders, Inc., 257 F.R.D. 1, 3 (D.D.C. 2009).
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