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ARTICLE · 21 AUGUST 2017

PTAB Denies Discovery On Chipsets Purportedly Related To Proper Interpretation Of Reference

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The PTAB denied the patent owner's request for lack of relevance.

United StatesIntellectual Property
Geoffrey Gavin
Geoffrey Gavin
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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.

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