throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 14
`Entered: February 17, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP-ON, INC.,
`Petitioner,
`
`v.
`
`MILWAUKEE ELECTRIC TOOL CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-01242 (Patent 7,554,290 B2)
`Case IPR2015-01243 (Patent 7,944,173 B2)
`Case IPR2015-01244 (Patent 7,999,510 B2)1
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, PATRICK R. SCANLON, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`ORDER
`Additional Discovery
`37 C.F.R. § 42.51(b)
`
`
`1 This Decision addresses issues pertaining to all three cases. Thus, we
`exercise our discretion to issue one Decision to be filed in each case. The
`parties are not authorized to use this style heading in subsequent papers.
`
`

`
`IPR2015-01242 (Patent 7,554,290 B2)
`IPR2015-01243 (Patent 7,944,173 B2)
`IPR2015-01244 (Patent 7,999,510 B2)
`
`
`A conference call in the above-captioned proceedings was held on
`February 8, 2016, including the panel and respective counsel for Petitioner,
`Snap-On, Inc. (“Snap-On”), and Patent Owner. Also participating in the
`conference call were counsel for Chervon North America, Inc. (“Chervon”),
`counsel for Positec Tool Corporation (“Positec”), and counsel for Hilti, Inc.
`(“Hilti”). Chervon, Positec, and Hilti are petitioners in related proceedings
`IPR2015-00595, IPR2015-00596, and IPR2015-00597. Also, Hilti is
`petitioner in related proceedings IPR2015-01164, IPR2015-01165, and
`IPR2015-01166. Patent Owner requested the call seeking authorization to
`file one or more motions for additional discovery.
`For convenience, we will refer to proceedings IPR2015-00595,
`IPR2015-00596, and IPR2015-00597 as the first set of proceedings,
`proceedings IPR2015-01164, IPR2015-01165, and IPR2015-01166 as the
`second set of proceedings, and proceedings IPR2015-01242, IPR2015-
`01243, and IPR2015-01244 as the third set of proceedings.
`During the call, Patent Owner indicated that, in the first set of
`proceedings, the Board ordered additional discovery of a limited number of
`documents from Chervon and Hilti. Patent Owner indicated that it now
`seeks discovery of the same Chervon documents in the second and third sets
`of proceedings and the same Hilti documents in the third set of proceedings.
`Patent Owner indicated that Hilti has agreed to produce its documents in the
`second set of proceedings, in which it is the petitioner. In addition, Patent
`Owner indicated that it seeks discovery of a number of Snap-On documents
`in the second and third sets of proceedings. Patent Owner represented that,
`based on input from its litigation counsel, these Snap-On documents contain
`information relevant to the issue of secondary considerations of obviousness.
`2
`
`
`
`

`
`IPR2015-01242 (Patent 7,554,290 B2)
`IPR2015-01243 (Patent 7,944,173 B2)
`IPR2015-01244 (Patent 7,999,510 B2)
`
`
`Chervon opposed Patent Owner’s request, arguing that because it is
`not a party in the second and third sets of proceedings, it should not be
`compelled to submit documents in these proceedings absent a subpoena.
`Hilti confirmed that it has reached agreement with Patent Owner regarding
`producing its documents in the second set of proceedings, but opposed
`Patent Owner’s request with respect to the third set of proceedings for
`reasons similar to those raised by Chervon. Snap-On also opposed Patent
`Owner’s request, arguing against the relevancy of its documents.
`With respect to the instant proceedings (i.e., the third set of
`proceedings), the panel authorized Patent Owner to file a 7-page motion for
`additional discovery. This motion is limited to the Chervon and Hilti
`documents produced in the first set of cases and the Snap-On documents
`described by Patent Owner during the conference call. We also authorized
`Snap-On, Petitioner in the instant proceedings, to file a 7-page opposition.
`Furthermore, because Patent Owner’s request involves their documents, we
`authorized both Chervon and Hilti to file 7-page oppositions. In order to file
`their papers, as non-parties to the instant proceedings, Chervon and Hilti
`must send the papers in PDF format by email to trials@uspto.gov, copying
`all parties in the email and indicating into which proceeding the paper is to
`be entered.
`
`Accordingly, it is
`ORDERED that Patent Owner is authorized to file a 7-page motion
`for additional discovery within two business days;
`
`3
`
`
`
`

`
`IPR2015-01242 (Patent 7,554,290 B2)
`IPR2015-01243 (Patent 7,944,173 B2)
`IPR2015-01244 (Patent 7,999,510 B2)
`
`
`FURTHER ORDERED that Petitioner is authorized to file a 7-page
`opposition within five business days from the date that Patent Owner files its
`motion for additional discovery;
`FURTHER ORDERED that Chervon is authorized to file a 7-page
`opposition within five business days from the date that Patent Owner files its
`motion for additional discovery; and
`FURTHER ORDERED that Hilti is authorized to file a 7-page
`opposition within five business days from the date that Patent Owner files its
`motion for additional discovery.
`
`4
`
`
`
`

`
`IPR2015-01242 (Patent 7,554,290 B2)
`IPR2015-01243 (Patent 7,944,173 B2)
`IPR2015-01244 (Patent 7,999,510 B2)
`
`
`
`
`PETITIONER:
`
`Paul Devinsky
`Joseph H. Paquin, Jr.
`Amol A. Parikh
`MCDERMOTT, WILL & EMERY LLP
`pdevinsky@mwe.com
`jpaquin@mwe.com
`amparikh@mwe.com
`
`
`
`PATENT OWNER:
`
`Dion M. Bregman
`Charles C. Huse
`MORGAN, LEWIS & BOCKIUS LLP
`dbregman@morganlewis.com
`chuse@morganlewis.com
`
`
`
`5

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