Apotex Inc. v. Wyeth LLC, Denying Motion for Leave to File Motion for Additional Discovery IPR2014-00115
Wednesday, July 23, 2014

Takeaway: Leave to file a motion for additional discovery will only be granted if a party can show that the discovery will go to the merits of the patentability issues upon which trial had been instituted.

In its Order, the Board denied Patent Owner’s Motion for Leave to File a Motion for Additional Discovery. Patent Owner noted that during the deposition of one of Petitioner’s declarants, the declarant testified that she had not authorized anyone, including her employer, to sign her initial declaration, that she did not approve or even review the declaration, and that there were changes from her initial translation in the translation that was eventually filed.  Thus, Patent Owner requested additional discovery to determine the circumstances surrounding the changes made to the translation before it was filed with the Board.

Petitioner stated that declarant’s employer believed it had obtained authorization to sign the declaration and that the second translation was provided because Patent Owner had objected to the first translation. Patent Owner stated that the changes that were made to the first translation, upon which trial had been instituted, infected the entire process, but acknowledged that the substitute translation cured the objections to the initial translation.  The Board held that any discrepancies in the initial translation were cured by the second translation; therefore, additional discovery would not go to the merits of the patentability issues upon which trial had been instituted.  Thus, additional discovery was not warranted.

Apotex Inc. v. Wyeth LLC, IPR2014-00115
Paper 34: Order on Conduct of the Proceeding
Dated: July 21, 2014
Patent 7,879,828 B2
Before: Lora M. Green, Francisco C. Prats, and Jo-Anne M. Kokoski
Written by: Green

 

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