By Julia Paschwitz* and Matt Johnson –
On September 21, 2021 a PTAB panel granted a motion to strike two Exhibits as not timely submitted by the Petitioner in Samsung Electronics America, Inc. v. Kannuu PTY LTD, IPR2020-00738. Those exhibits were submitted by the Petitioner as part of an additional-discovery battle related to secondary considerations, where Petitioner produced a non-English version of the document (Exhibit 1058) to the Patent Owner just before a deposition of its corporate representative. Petitioner later tried to file that exhibit and its translation (Exhibit 1059 into the matter. The PTAB authorized Patent Owner (Kannuu PTY LTD) to file a motion to strike the two Exhibits.
Patent Owner argued that Exhibit 1058 and its translation as well as Petitioner’s arguments based on those exhibits were not only untimely submitted but also “inadmissible as unauthenticated hearsay.” Petitioner on the contrary contended that Exhibit 1058 has been timely uncovered in the preparation for the deposition of Petitioner’s corporate representative ordered by the Board. Further, Petitioner argued that Patent Owner was to blame for any prejudice caused by the late production of this document. In particular, Patent Owner’s counsel has failed to ask Petitioner’s corporate representative questions about the document at his deposition as well as to translate the document in real time and has also failed to ask questions about the documents’ authenticity or admissibility. Additionally, Petitioner contended that Patent Owner did not timely object to Exhibit 1058 during the deposition, and that Patent Owner was not prejudiced, because it could have asked Petitioner’s corporate representative, who speaks and reads Korean, more questions about the document.
The PTAB sided with Patent Owner regarding the untimely submission of Exhibits 1058 and 1059, because “Patent Owner should not be prejudiced by Petitioner’s decision to delay further investigation into its alleged independent development for almost a year after knowing that copying would be at issue in this proceeding.” The PTAB did not address whether the Exhibits would have been considered admissible evidence.
In its reasoning for granting this motion, the PTAB first clarified that it is undisputed that “Patent Owner alleged copying as a secondary consideration of non-obviousness in its Patent Owner Preliminary Response in June 2020.” But Petitioner did not produce Exhibit 1058 until the day before the deposition of Petitioner’s corporate representative almost a year after that preliminary response. The PTAB acknowledged that the “document may have resided with Petitioner’s Korean parent entity.” But the panel did not see that as a justification for the delay. Further, Exhibit 1058 was originally produced only in Korean language and no translation was provided by Petitioner until over a month after the deposition of Petitioner’s corporate representative.
The PTAB argued that “Equity weighted strongly in favor of striking Exhibits 1058 and 1059 as well as Petitioner’s arguments relying on those exhibits,” where it viewed “Petitioner’s arguments in opposition as largely disingenuous.” In particular, the PTAB found Petitioner’s argument that Patent Owner was not prejudiced by the late production of the documents unconvincing.
Further, the PTAB addresses Petitioner’s argument that Patent Owner’s counsel is the one to blame, but finding it not persuasive. Instead, the PTAB agreed with Patent Owner by stating that “Petitioner’s conduct around its corporate representative’s deposition was less than ideal”. Unlike the Petitioner, the PTAB was neither convinced by Petitioners’ argument, that Patent Owner’s counsel was required to object, because “such a rule would prejudice Patent Owner” nor by the argument that Patent Owner’s counsel should have had the witness translate the document into English in real time. Additionally, the PTAB found that Patent Owner’s counsel was not required to ask the witness questions to establish the admissibility of Exhibit 1058, because it was Petitioner “who introduced and is attempting to rely on the exhibits at issue”.
Last but not least, the PTAB stated “Petitioner chose to zealously oppose” the additional discovery Patent Owner sought”. Without judging Petitioner’s strategy, the PTAB expressed: “that strategy apparently meant that it did not proactively search for documents about independent development sooner and timely make that evidence of record. Having chosen this strategy, Petitioner cannot then change course and sandbag Patent Owner on the eve of the ordered deposition with a foreign language document, all the while blaming Patent Owner for failing to elicit relevant testimony about the document”.
Takeaways: Delayed document production, after knowing about an issue, can lead to the other party being prejudiced such that the PTAB will not permit entry of those produced documents into the matter.
*Julia is currently a law clerk in Jones Day’s Pittsburgh Office.
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