Takeaway: An inventor oath submitted with a patent application is not “affidavit testimony” and does not entitle the petitioner to cross examine the inventor. 

In its Order, the Board denied Petitioner’s request to file a motion to compel the deposition testimony of a named inventor of the ’807 Patent and denied Patent Owner’s request to file a motion for sanctions.  Petitioner argued that the Patent Owner relied upon the specification of the ’807 Patent as factual evidence supporting its Patent Owner Response, and the inventor signed an oath that accompanied the patent application that stated that he read and understood the contents of the specification when the application was filed.  Thus, Petitioner argued that because of the oath, the ’807 Patent is testimony of the inventor.  The Board found that the existence of the required oath or affidavit that accompanies a patent application does not convert the patent specification into inventor “affidavit testimony,” as defined in the rules and subject to cross examination under Rule 42.51(b)(1)(ii).  Petitioner also sought the deposition of the inventor as additional discovery under Rule 42.51(b)(2), but the Board was not persuaded that the inventor testimony regarding prior art would net any useful information.

Patent Owner argued that Petitioner failed to meet and confer adequately because Petitioner refused to explain the bases for which it was seeking the inventor’s deposition.  The Board found that Petitioner did not make a good faith attempt to meet and confer, however, it declined to authorize a motion for sanctions at this time.  The Board did remind the parties, Petitioner in particular, that the Board may impose sanctions on a party that abuses the discovery process by failing to meet and confer in good faith.

Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176

Paper 29: Order Denying Petitioner’s Request for Authorization to File Motion to Compel Inventor Deposition

Dated: May 18, 2015

Patent 6,950,807

Before: Justin T. Arbes, David C. McKone, and Gregg I. Anderson

Written by: McKone