By Matthew L. Cutler, Principal
Many parties to inter partes review proceedings continue to have their guns pointed directly at their feet, taking erroneous actions that are consistently called out by the PTAB. In the midst of one such error, we explore the Board’s regulations relative to “compelled discovery.” In IPR2014-00041, -43, -51, -54, and -55 (styled as Geo Process Engineering, Inc. v. Steuben Foods, Inc.), an issue arose regarding an omnibus declaration by Patent Owner’s declarant that was not filed. The declarant signed an “omnibus” declaration which pertained to all five inter partes review proceedings pending between the parties. Counsel for Patent Owner then created five separate declarations that were specific to each IPR proceeding.
Oddly, though, counsel did not provide Declarant the opportunity to review the individual declarations before filing. Declarant had to acknowledge in deposition that each individual declaration was different from the others and that each declaration was different than the omnibus declaration (including some red-line edits that remained in the omnibus declaration). Declarant did testified that the five individual declarations did not contain substantively different testimony than the testimony which Declarant authorized.
In view of these facts, Patent Challenger filed a request to compel the production of the omnibus declaration and allow for cross-examination on that declaration. Both Patent Owner and Declarant himself opposed the request, claiming the omnibus declaration was a draft and subject to work-product protection.
The Board sided with Patent Challenger, finding that the omnibus declaration was not subject to work-product protection under these facts. The Board stated several factors which persuaded it to grant Patent Challenger’s request, including: (1) Patent Challenger has a strong interest in understanding the differences between the omnibus declaration and each of the five individual declarations in order to evaluate credibility of the declarations; (2) It’s inconsistent for Patent Owner to argue that the omnibus declaration is privileged while simultaneously allowing Declarant to review it for differences between the omnibus declaration and the individual declarations; (3) Declarant’s testimony that there is no substantive difference between the testimony of the omnibus declaration and the five declarations actually filed should not go unchallenged. In the end, the Board granted Patent Challenger’s request to compel the production of the omnibus declaration.
An interesting facet of this decision is that the Board characterized it as a motion to compel, versus the more common motion for additional discovery. The Board did not cite to, for example, 37 CFR 42.52 (“Compelling Testimony and Production”). Further, the production of a document that is in dispute between the parties has, in the past, been considered under the rubric for “additional discovery.” The general belief from commentators to date has been that “compelled discovery” relates to non-parties but there is nothing in Rule 42.52 that specifically limits compelled discovery to third partes. We will have to stay tuned and see if this is merely a vague choice of terminology by the Board, or a trend.