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“Regardless of the America Invents Act having established the PTAB over a decade in the past, functions for PTAB subpoenas have been comparatively uncommon, [but] they are often helpful to acquire key discovery in PTAB proceedings.”
The Patent Trial and Enchantment Board (PTAB) stays a well-liked and busy venue for post-grant overview of patents. These proceedings are recognized for being sooner, and by statute, they permit for much less discovery than district court docket patent circumstances. PTAB litigants due to this fact could not take into consideration potential third-party subpoenas, which might take important effort and time to acquire. It’s attainable, nonetheless, to acquire a subpoena in a PTAB case. In sure circumstances, a PTAB subpoena could be a great tool to bolster your case on the PTAB, however there are particular procedures that have to be adopted to correctly challenge and implement such a subpoena. Exact compliance with these procedures is critical to acquire the invention sought.
Sensible Makes use of for PTAB Subpoenas
PTAB subpoenas can be utilized in a wide range of methods. For instance, if a crucial witness, similar to an inventor, is now not beneath the management of the Patent Proprietor, a PTAB subpoena could also be used to compel testimony wanted. See Mitsubishi Plastics, Inc. v. Celgard, LLC, IPR2014-00524 (Paper 44) (Apr. 13, 2015) (allowing subpoena of Patent Proprietor’s witness who left Patent Proprietor’s employment). Third-party discovery can also be acceptable, for instance, to find out who’s a real-party-in-interest (RPI) to a PTAB continuing. See Farmwald v. Parkervision, Inc., IPR2014-00946 (Paper 36) (June 9, 2015) (allowing movement for subpoena relating to RPI challenge, although movement finally was not granted). Subpoenas can also play a job the place the proof to determine sure dates is within the possession of a 3rd celebration, similar to if a petitioner seeks to determine the publication date of a doc ready by a 3rd celebration. See Coastal Indus., Inc. v. Bathe Enclosures Am., Inc., IPR2017-00573 (Paper No. 27) (Feb. 20, 2018) (granting subpoena to Web Archives worker relating to date challenge).
PTAB Subpoenas Are Uncommon
Regardless of the America Invents Act (AIA) having established the PTAB over a decade in the past, functions for such subpoenas have been comparatively uncommon. Searches on Docket Navigator present than two dozen such requests relating to 3rd celebration discovery the final three years, regardless of over 1,000 PTAB issues being filed every year. Furthermore, there’s a dearth of federal court docket caselaw on the topic. As Justice of the Peace Choose Donahue within the Central District of California not too long ago noticed, some circuits (together with the Ninth Circuit) have by no means handled the statute beneath which PTAB subpoenas could also be issued, 35 U.S.C. §24. Waterdrop Microdrink GmbH v. Qingdao Ecopure Filter Co., Ltd., No. 2:23-MC-00123-JLS-PD, 2024 WL 277461, at *4 (C.D. Cal. Jan. 18, 2024). And far of the restricted caselaw relating to this challenge arises within the context of Trademark Trial and Enchantment Board (TTAB), not PTAB, proceedings.
This lack of authority on this challenge makes it crucial for practitioners to make sure they strictly adjust to the statutory necessities for acquiring a PTAB subpoena. With the compressed schedule of PTAB proceedings, any error can result in delay and should end in lacking the chance to acquire the invention earlier than a PTAB submitting is due.
How To Acquire A PTAB Subpoena
Step One: PTAB Authorization
Discovery on the PTAB is ordinarily restricted to preliminary disclosures and “routine discovery” consisting of displays cited in papers or testimony, cross-examination of affidavit testimony, and “related data that’s inconsistent with a place superior by the celebration throughout the continuing.” See 37 C.F.R. §42.51(a)-(b). In any other case, extra discovery is restricted to that agreed between the events or by movement, whereby the movant exhibits the extra discovery is “within the pursuits of justice.” See 37 C.F.R. §42.51(b)(2); 35 U.S.C. §316(a)(5) (discovery in inter partes evaluations is restricted to deposition of witnesses submitting affidavits and “what’s in any other case vital within the curiosity of justice”).
A subpoena falls exterior of the “routine” discovery permitted; due to this fact, to pursue a subpoena, the celebration should file a movement for authorization for the subpoena with the PTAB. See §42.52(a) of the Guidelines of Observe for Trials Earlier than the Patent Trial and Enchantment Board and Judicial Overview of Patent Trial and Enchantment Board (“[a] celebration in search of to compel testimony or manufacturing of paperwork or issues should file a movement for authorization”). That movement should describe the relevance of the testimony or proof, in addition to the identify of the witness or the character of the doc or factor sought. See §42.52(a)(1)-(2). There are extra necessities if the proof or witness is exterior of the US. See §42.52(b).
Within the movement for authorization, the celebration should present the invention sought is within the pursuits of justice. The PTAB appears to be like on the 5 Garmin components to find out whether or not the extra discovery is within the curiosity of justice. Garmin Int’l, Inc. v. Cuozzo Velocity Techs. LLC, IPR2012-00001, Paper 26 at 6-7 (PTAB. Mar. 5, 2013) (precedential). The 5 Garmin components are:
(1) whether or not there exists greater than a risk and mere allegation that one thing helpful can be found;
(2) whether or not the requests search the opposite celebration’s litigation positions and the underlying foundation for these positions;
(3) whether or not the shifting celebration has the power to generate equal data by different means;
(4) whether or not the shifting celebration has supplied simply comprehensible directions; and
(5) whether or not the requests are overly burdensome.
A celebration in search of a subpoena have to be ready to current compelling arguments on every of those components as a way to get hold of authorization for the subpoena from the PTAB.
Step 2: Compliance With 35 U.S.C. § 24
As soon as PTAB authorization has been obtained for a subpoena, a celebration’s work just isn’t achieved. The celebration should subsequent make the most of the federal courts to acquire the subpoena that the PTAB licensed in order that it may be served on the third celebration. 35 U.S.C. § 24 units forth a selected course of by which a celebration to a PTAB continuing could get hold of a federal court docket subpoena:
The clerk of any United States court docket for the district whereby testimony is to be taken to be used in any contested case within the Patent and Trademark Workplace, shall, upon the applying of any celebration thereto, challenge a subpoena for any witness residing or being inside such district, commanding him to seem and testify earlier than an officer in such district licensed to take depositions and affidavits, on the time and place said within the subpoena.
After the district court docket points the subpoena, the usual provisions of the Federal Guidelines of Civil Process apply relating to the attendance of witnesses and to the manufacturing of paperwork and issues. See 35 U.S.C. § 24. The federal court docket that issued the subpoena additionally has the facility to implement the subpoena by way of movement apply. Id.
Notably, whereas this statute refers solely to “testimony,” it’s unlikely that paperwork with out testimony can be of any profit in a PTAB continuing with out authenticating testimony. However not less than the Tenth Circuit has held, in a slim holding, {that a} separate deposition subpoena just isn’t required to acquire paperwork. See El Encanto, Inc. v. Hatch Chile Co., Inc., 825 F.3d 1161, 1167 (tenth Cir. 2016). It doesn’t, nonetheless, appear to alleviate litigants of any of the opposite necessities of part 24, as mentioned beneath.
Finest Practices for Issuance and Enforcement of PTAB Subpoenas
There are a selection of pitfalls that events could encounter within the course of above. It’s crucial that events intently and thoroughly comply with the procedures at every step of the way in which. As a result of timing of PTAB proceedings, any delays or errors in acquiring discovery may be deadly to the hassle.
Initially, events ought to make a strong and thorough displaying on every of the Garmin components outlined above. The PTAB has denied requests for subpoenas the place, for instance, the celebration had not contacted a 3rd celebration to see if they’d the data and can be keen to supply it. In Toshiba Corp. v. Optical Gadgets, LLC, IPR2014-01445 (Paper 14) (Could 8, 2015), for instance, the PTAB decided that the petitioner’s failure to take action constituted a failure to display that it was “past mere risk and mere allegation” that there was a must compel third-party discovery, or that such compelled discovery would produce the data sought. Practitioners ought to due to this fact make all makes an attempt to acquire the data voluntarily from third events earlier than in search of a subpoena.
Additional, as soon as a celebration obtains authorization from the PTAB for a subpoena, it should proceed strict compliance with the PTAB statutory necessities. The celebration can’t merely function as in federal litigation, the place attorneys can challenge subpoenas just by signing them. 35 U.S.C. § 24 is evident that the subpoena have to be issued by the federal court docket. The celebration in search of the subpoena should open a miscellaneous matter and have the clerk challenge a subpoena. Absent doing so, courts have denied requests to compel compliance with subpoenas, noting that 35 U.S.C. § 24 “specifies that the subpoena have to be issued by the clerk.” See Waterdrop Microdrink GmbH, 2024 WL 277461, at *4 (denying movement to compel TTAB subpoena); Tiger Lily Ventures Ltd. v. Barclays Cap. Inc., No. 17MISC499GBDKNF, 2018 WL 2316727, at *2 (S.D.N.Y. Could 22, 2018) (denying movement to compel TTAB subpoena the place “it’s undisputed that [the party’s] attendance on the deposition was not compelled by a subpoena issued by the Clerk of this Court docket”).
That is true even within the face of arguments from litigants that this elevates “kind over substance.” “No matter whether or not the requirement elevates kind over substance, nonetheless, Part 34 units forth the process by which a celebration can get hold of issuance of a subpoena, and Plaintiff didn’t comply with that process.” Waterdrop Microdrink GmbH, 2024 WL 277461, at *5 (denying movement to compel).
Proceed with Warning
PTAB subpoenas may be helpful to acquire key discovery in PTAB proceedings. However the restricted caselaw and complicated statutory scheme make it vital for practitioners to be cautious when in search of such subpoenas and to make sure absolute compliance with the entire necessities.
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