In TD Ameritrade Holding Corp. v. Trading Technologies International, Inc., CBM2014-00131, Paper 11 (August 14, 2014), believing it caught Petitioner in a failure to disclose prior inconsistent statements, the Patent Owner sought “guidance” from the Board.  The Board merely reiterated the rule, directing the patent owner to 37 C.F.R. § 42.51(b)(1)(iii), which states “[u]nless previously served, a party must serve relevant information that is inconsistent with a position advanced by the party during the proceeding concurrent with the filing of the documents or things that contains the inconsistency.”

Routine discovery under 37 C.F.R. §41.51(b)(1)(iii) is narrowly directed to specific information known to the responding party to be inconsistent with a position advanced by that party in the proceeding, and not broadly directed to any subject area in general within which the requesting party hopes to discover such inconsistent information.”  Thus disclosure depends not only on the good faith of an opponent to make the disclosure, but to identify the inconsistency to begin with.

There is a duty to disclose inconsistent statements, but no real sytem to identify or enforce these disclosures.