A Compelling Decision – Board Addresses Scope Of Work Product Protection

by | Jan 24, 2020 | Discovery, Expert Witnesses

By Marlee Hartenstein and Matt Johnson –

In a series of IPR proceedings between Petitioner Adobe Inc. and Patent Owner RAH Color Technologies LLC, the Patent Trial and Appeal Board declined to extend attorney work product protection to deposition questions seeking the “underlying factual basis” for an expert’s testimony and compelled the expert to provide written answers to particular questions. Adobe Inc. v. RAH Color Technologies LLC, IPR2019-00627, -00628, -00629, and -00646, Paper 59 (Dec. 12, 2019).

During a cross-examination of its expert, Dr. Poynton, Petitioner’s counsel instructed Dr. Poynton not to answer several questions based on attorney work product protections.  Patent Owner found these instructions improper, and filed a motion to compel discovery.  Specifically, Patent Owner sought to compel responses to the following three questions that were asked but not answered at the deposition:

  1. Did Dr. Poynton perform any prior art search?
  2. Did Dr. Poynton consider claim charts comparing the patent owner’s patent claims to alleged prior art references (or invalidity arguments in another form) prior to Dr. Poynton signing his declaration?
  3. Did Dr. Poynton determine that any reference, or combination of references, that Petitioner provided to him not render any of the challenged claims obvious?

Patent Owner asserted the questions were directed to “facts or data” underlying Dr. Poynton’s testimony and as such were permissible as a part of routine discovery.  In its opposition, Petitioner argued that Patent Owner sought to compel testimony about the preparation of Dr. Poynton’s declarations, including “prior art searches, invalidity claim charts, and communications about non-selected art,” which are “obviously not ‘facts or data.’”

The Board found in favor of Patent Owner.  It held Patent Owner’s questions sought the underlying factual basis of the testimony, which “fall[s] squarely within routine discovery permitted by [the Board’s] rules.”  “Patent Owner’s questions [did] not seek the contents of any claim charts or any analysis therefor created by attorneys.  Nor [did] they seek information regarding how Petitioner’s attorneys chose the references at issue in these proceedings.”  According to the Board, “Questions 1–3 only [sought] the identity of the documents Dr. Poynton reviewed and considered for his testimony,” and as such were not protected work product.

The Board thus granted Patent Owner’s motion to compel, and ordered Petitioner to provide answers to each question in the form of written responses to interrogatories.  The interrogatory responses are accessible here.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.