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ARTICLE · 05 DECEMBER 2014

PTAB Expands Discovery For Inter Partes Review

McDermott Will & Emery
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In a decision that has the potential to expand the scope of permissible discovery in inter partes reviews (IPRs) as well as other post-grant procedures under the America Invents Act, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) granted a patent owner’s motion to compel production of invoices withheld under a claim of attorney-client privilege.

United StatesIntellectual Property
G. Matthew McCloskey
G. Matthew McCloskey
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GEA Process Engineering, Inc. v. Steuben Foods, Inc

In a decision that has the potential to expand the scope of permissible discovery in inter partes reviews (IPRs) as well as other post-grant procedures under the America Invents Act, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) granted a patent owner's motion to compel production of invoices withheld under a claim of attorney-client privilege.  GEA Process Engineering, Inc. v. Steuben Foods, Inc., Case Nos. IPR2014-00041, -00043; -00051; -00054; and -00055 (PTAB, Sept. 12, 2014) (Elluru, APJ).

Petitioner GEA filed five IPR petitions against five related patents owned by Steuben Foods.  The claims of the patents related to methods for bottling foodstuffs by aseptically disinfecting or filling bottles with aseptically sterilized foodstuffs at a rate greater than 100 bottles per minute.  Parallel reexaminations and reissue proceedings had already been instituted for some of the

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