PTAB Denies Request to Compel Discovery of Evidence From Parallel ITC Investigation due to Lack of Consistency
The board found that the patent owner had not taken inconsistent positions but warned them to continue to produce any information that was inconsistent with arguments made during the current IPR, even if it was related to arguments they dropped at ITC. The board found that the patent owner did not take inconsistent positions, but warned the patent owner to continue to produce information that was inconsistent with arguments made in the current IPR. This included information that related to arguments that the patent owner dropped at the ITC. Petitioner claimed that patent owner violated mandatory disclosure rules for not producing a textbook or expert testimony from a parallel ITC investigation which contained information inconsistent with the patent owner’s IPR position. Petitioner also argued that patent owner had to produce other non-public information that contained inconsistencies, including non-public exhibits in its ITC complaint, an expert report, and deposition transcripts.
The ITC information in question related to the role of hydrogen in GaN layers. Petitioner argued the ITC arguments about the presence of hydrogen within a compensated GaN layers were inconsistent with patent owner’s IPR arguments. Patent owner responded by explaining that its ITC evidence indicated that the GaN layers were compensated, and contained magnesium and hydrogen, which was consistent to its IPR argument, that “the mere existence of hydrogen is insufficient to prove a compensated GaN Layer.” Patent owner also claimed that the textbook used in the ITC proceeding made no mention of GaN, whereas its IPR arguments were specific to GaN. The patent owner also noted that it was not necessary to demand the textbook, as petitioner’s expert could be deposed on the textbook. The board was also convinced by the patent owner’s certification pursuant to 37 CFR 42.51 (b)(1) (iii) stating that it had investigated and, to its best knowledge, complied its routine discovery obligations. The board explained to petitioner that they can still assert inconsistent evidence and any inconsistency “would serve to damage the credibility
arguments.” However, at this point, the board did not find any such inconsistencies. Lastly, the board reminded patent owner that it has an ongoing duty to provide inconsistent information from the parallel ITC investigation, regardless of whether its position had changed in the interim.
Practice Tip
: Parties in proceedings before the board have an ongoing duty under 37 C.F.R. SS 42.51 requires that information be served that is inconsistent with a previous position. When faced with an allegation of withholding inconsistent information, parties must exercise diligence and investigate such claims to ensure satisfaction with the board’s evidentiary rules, especially when parties’ positions evolve in response to fact or expert discovery.[patent owner’s]Innoscience Tech. Co., Ltd. v.Efficient Power Conversion Corporation, IPR2023-01381, paper 25 (August 8, 2020).
