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In IPR proceeding involving Medtronic, Inc. v. NuVasive. Inc., the petitioner, Medtronic, file a petition seeking review of U.S. Patent No. 8,361,156 relating to a spinal implant and methods of spinal fusion using the implant. The petition was Medtronic’s third IPR petition challenging the validity of claims in the ‘156 patent. One of the two earlier petitions was granted while the other was denied. According to Medtronic, the instant petition “remedies the deficiencies of the [earlier denied] petition, and also adds new arguments and evidence as to the length disclosure of [prior art publication to Frey].”

In its preliminary response, the patent owner argued that the petition “is essentially a duplicate of its previously denied petition.” As summarized below, the Board agreed with the patent owner and denied Medtronic’s third challenge to the validity of claims of the ‘156 patent based on “the same or substantially the same prior art or arguments” presented in the earlier, denied petition.
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In this patent infringement action, Adobe filed a Daubert motion seeking to exclude the plaintiff’s damage expert largely based on VirnetX, Inc. v. Cisco Sys., Inc., 2014 WL 4548722 (Fed. Cir. Sept. 16, 2014). As explained by the district court, “Adobe does not seriously challenge Mr. Yurkerwich’s qualifications as an economist. Nor does it question the fundamental approach he has taken in arriving at an estimation of the value of the royalties lost to EveryScape as a result of the alleged infringement. The “hypothetical willing buyer-willing seller” model is a standard economic tool that has been used by economists and appraisers for decades in determining the estimated value of lost economic opportunities.”

Instead, Adobe challenged that “Mr. Yurkerwich has overvalued the revenue and royalty base apportionable to Vanishing Point by considering Vanishing Point as a whole rather than segregating the incremental value added to Photoshop by the accused Clone Brush (which EveryScape claims as its proprietary invention). Adobe relies specifically on VirnetX, Inc. v. Cisco Sys., Inc., 2014 WL 4548722, at *15-18 (Fed. Cir. Sep. 16, 2014), which holds that a damages expert must attempt to apportion value specifically to the infringing features of the contested product.”
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In IPR proceeding First Data Corporation v. Cardsoft (Assignment for the Benefit of Creditors), LLC, the petitioner, First Data Corporation, attempted to file a petition on April 30, 2014 seeking review of U.S. Patent No. 6,934,945 assigned to Cardsoft (Assignment for the Benefit of Creditors), LLC. On May 20, 2014, the petitioner filed a corrected petition to address certain formatting issues, but, in doing so, also served the petition on the patent owner of record at the address listed in the USPTO PAIR records rather than the patent owner’s corporate address, the address where the original petition was served. On August 7, 2014, the patent owner filed its preliminary response, raising the defense that the petition was time barred under Section 315(b) because the real party in interest, VeriFone, was served with a complaint more than one year before the May 20, 2014 filing of the petition.

In 2008, the patent owner has sued VeriFone alleging infringement of the ‘945 patent. On June 8, 2012, a jury determined that VeriFone infringed the ‘945 patent and that the patent was valid. That decision was appealed to the Federal Circuit.
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Dell moved to compel the production of certain internal counsel communications at the plaintiff, MLR. MLR had refused to produce the documents, claiming work product protection.

As explained by the district court, “[i]n the circumstances presented here, which are the result of MLR’s choices, the established policies underlying the work product doctrine require that the phrase ‘in anticipation of litigation’ in Fed. R. Civ. P. 26(b)(3)(A) be limited, with respect to non-opinion material, to material generated solely with respect to MLR’s relationship with a particular potential licensee/defendant beginning at the time that potential licensee/defendant is identified. Other or more general relationship to litigation will render the material presumptively business-related and not protected.”
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In General Electric Co. v. Transdata, Inc., the patent owner requested authorization to file a motion for leave to take discovery of petitioner General Electric regarding whether GE is in privity with a defendant in litigation with the patent owner. Should the patent owner prevail and prove that GE is in privity with its customer, then the patent owner asserts that an inter partes review cannot be instituted because of the time limitations under 35 U.S.C. § 315(b), presumably because GE’s customer was served with a complaint more than one year before the petitioner filed the instant IPR petition.

The patent owner seeks the production of the following information:

(1) an indemnification agreement between Petitioner and [customer] that was claimed to be entered into around December 30, 2011; (2) any other indemnification agreements between Petitioner and [customer] regarding the Oklahoma litigation; (3) communications regarding these indemnification agreements; (4) retention agreements between Petitioner, [customer], and counsel for Petitioner and [customer] in the Oklahoma litigation; (5) the amounts of legal bills paid by Petitioner for its defense of the Oklahoma litigation; and (6) indemnification agreements between Petitioner and other defendants in the Oklahoma litigation.

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In this patent infringement action between Ultratec, Inc. (“Ultratec”) and Sorenson Communications, Inc. (“Sorenson”), Sorenson sought to admit evidence of an inter partes review proceeding of the patent-in-suit. Sorenson wanted to admit the evidence to contradict the plaintiff’s use of the presumption of validity of the patent.

As explained by the district court, “[a]t the final pretrial conference on October 3, however, defendants expressed their view that, in light of the court’s ruling that it would instruct the jury on the presumption of validity and allow plaintiffs’ counsel to refer to the presumption during argument, evidence as to the pending inter partes review proceedings is relevant and admissible to rebut the presumption of validity.”
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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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