Samsung Electronics America, Inc. v. Kannuu PTY Ltd.,
IPR2020-00738, Paper 100 (PTAB Redacted Version July 22, 2022)
Before: Droesch, Chung, Kaiser.
In a recently-published redacted Final Written Decision, a panel
of the Patent Trial and Appeal Board (“Board”) granted
a motion to strike evidence against Petitioner under 37 C.F.R.
§§ 42.5(a) and 42.71(a) for failing to comply with
discovery obligations. The decision is notable because motions to
strike are rarely granted, and as such the decision informs parties
to IPR proceedings how they must conduct themselves when discovery
is required.
As background, following institution of inter
partes review, it became clear in the proceeding that
“secondary considerations” (i.e., objective
evidence that may impact the ultimate decision of whether patent
claims are invalid as obvious under 35 U.S.C. § 103) was an
issue the parties needed to address in their briefs and at the
hearing. Both parties thus moved the Board for
