Takeaway: A party seeking to compel testimony or the production of documents via a subpoena must first file a motion for authorization or the compelled evidence will not be admitted in the proceeding.

In its Order, the Board granted Petitioner’s opposed motion for authorization to compel third-party testimony and production of documents by seeking authorization to serve a subpoena. “A party seeking to compel testimony or the production of documents via a subpoena must first file a motion for authorization or the compelled evidence will not be admitted in this proceeding.” See 37 C.F.R. § 42.52(a); see also 35 U.S.C. § 24. The Board “generally consider[s] the Garmin factors in determining whether discovery is in the interest of justice.” See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26) (informative).

Here, Petitioner directed the Board to “photographs submitted by Patent Owner as part of a complaint in a federal lawsuit filed against Playtex on May 13, 2011” and argued that “establishing foundation for the photographs is necessary to demonstrate the unpatentability of substitute claims set forth in Patent Owner’s Motion to Amend.” Thus, Petitioner sought “to compel the testimony of Edgewell regarding the dates on which it offered to sell the PLAYTEX sippy cups with the ‘Twist and Click’ feature” and “production at the deposition of the cups depicted in the photographs.”

The Board analyzed the pertinent Garmin factors. The Board found that Petitioner’s proposed subpoena provides “sufficient specificity regarding the testimony and objects sought”: “Petitioner only seeks testimony to establish that each sippy cup, as depicted in respective photographs, exemplifies products offered for sale, on sale and in public use prior to June 2, 2010,” which Petitioner has shown sufficiently “is relevant and needed at this stage in the proceeding.” The Board also noted that “Petitioner represents that it contacted Edgewell’s counsel, who indicated that a subpoena would be necessary to compel Edgewell to submit to the request for the information sought by Petitioner.” Thus, the Board determined “that Petitioner has established more than a possibility that it will obtain the evidence that it seeks.”

The Board disagreed with Patent Owner’s contention that Petitioner “has no evidence that additional discovery will actually produce ‘useful’ information” and was “not persuaded that it is necessary for Petitioner to prove their arguments now in order for us to grant authorization to seek information potentially useful for their case.” The Board also rejected Patent Owner’s argument that “equivalent information” may be found in a U.S. Patent Application Publication assigned to Playtex that appears in the record, noting that the information “may not be the same” and declined “to opine at this stage of the proceeding on the respective merits of the evidence of record.” Finally, the Board determined “that, at this time, the schedule of this case would not be adversely impacted.”

The Board thus authorized “[Petitioner] to seek a subpoena directed to Edgewell pursuant to 35 U.S.C. § 24. Further, “Patent Owner is permitted to attend any deposition taken pursuant to the subpoena and cross-examine the witness, but only regarding the subject matter of the direct testimony of the witness.”

Luv N’ Care, Ltd. v. Munchkin, Inc., IPR2015-00872

Paper 24: Granting Petitioner’s Motion for Authorization to Compel Testimony and Production of Documents

Dated: February 18, 2016

Patent: 8,739,993 B2

Before: Sheridan K. Snedden, Mitchell G. Weatherly, and James A. Tartal

Written by: Snedden