By Geoffrey Gavin

In Semiconductor Components Industries, LLC v. Power Integrations, IPR2016-00809, Paper 65 (PTAB Aug. 4, 2017), the PTAB denied the patent owner’s request for authorization to serve requests for production seeking documents and things related to certain chipsets.  The patent owner argued that the requested materials were relevant to the proper interpretation of a Japanese patent application (the Oda reference) that is the lead reference in the sole instituted ground of unpatentability under § 103.

The patent owner asked the PTAB to compel the petitioner to produce several categories of documents and things relating to two specific models of integrated circuit chips.  Id. at. 2.  The patent owner’s request arose following the petitioner’s reply brief.  Id. at 2-3.  The petitioner engaged an agent to find Mr. Oda, the lead inventor on the Oda reference, and the petitioner’s expert spoke to Mr. Oda to confirm the expert’s understanding of the reference.  Id.  During depositions of the petitioner’s witnesses, there was some testimony that two specific IC chips were related to the Oda reference.  The patent owner argued that the requested materials (data sheets, a physical module, and shipping history for the chips) may have information inconsistent with the petitioner’s position on the teachings of the Oda reference.  Id. at 2-3.

The PTAB denied the patent owner’s request for lack of relevance.  Id. at 3-4.  The PTAB stated that it “did not see any need to look at products or data sheets to understand what the Oda reference teaches.”  Id. at 3.  In addition, the PTAB found the patent owner’s request speculative.  Id.  The PTAB noted that:

[T]he mere existence of documents describing devices and corresponding physical devices that may, or may not, implement features of the Oda reference provides no further understanding what the Oda reference itself would have taught or suggested to the ordinarily skilled artisan.  We can adequately weigh each party’s position and their respective experts’ opinions regarding what the Oda reference would have taught or suggested to the ordinarily skilled artisan regardless of whether the Requested Materials are consistent or inconsistent with either party’s position.

Id. at 4.  Because the PTAB will determine the teachings and suggestions from the Oda reference itself and the experts’ respective opinions on the reference, the PTAB held the patent owner could not show the requested materials were relevant to an issue to be addressed in the Final Written Decision.  Id.

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Geoffrey Gavin focuses his practice on patent litigation, PTAB litigation, and strategic IP counseling. He has experience with numerous technologies, including medical devices, wireless telecommunications, data encryption and computer security, software, video and image processing, automotive products, packaging, athletic footwear and equipment, and floor covering.