In GEA Process Engineering, Inc. v. Steuben Foods, Inc., (IPR2014-00041), Paper 22 (IPR2014-00043), Paper 23, (IPR2014-00051), Paper 21 (IPR2014-00054), Paper 18 (IPR2014-00055), Paper 14 (April 15, 2014), the patent owner believed that it had engaged petitioner’s expert before petitioner, and sought to get petitioner to produce documents that the patent owner provided to the expert.  The Board explained that the Office does not have authority to issue a subpoena for the production of documents. Production of documents is compelled through a subpoena from a United States District Court, pursuant to 35 U.S.C. § 24:

The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office, shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena. The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent and Trademark Office.

Every witness subpoenaed and in attendance shall be allowed the fees and traveling expenses allowed to witnesses attending the United States district courts.

A judge of a court whose clerk issued a subpoena may enforce obedience to the process or punish disobedience as in other like cases, on proof that a witness, served with such subpoena, neglected or refused to appear or to testify. No witness shall be deemed guilty of contempt for disobeying such subpoena unless his fees and traveling expenses in going to, and returning from, and one day’s attendance at the place of examination, are paid or tendered him at the time of the service of the subpoena; nor for refusing to disclose any secret matter except upon appropriate order of the court which issued the subpoena.

The Board said that Section 42.52 provides procedures for compelling the production of documents. 37 C.F.R. § 42.52. Section 42.52(a) requires the party seeking to compel production of documents to first obtain authorization from the Board; otherwise, the compelled evidence will not be admitted in the proceeding:

§ 42.52Compelling testimony and production.

(a)Authorization required. A party seeking to compel testimony or production of documents or things must file a motion for authorization. The motion must describe the general relevance of the testimony, document, or thing, and must:

(1) In the case of testimony, identify the witness by name or title; and

(2) In the case of a document or thing, the general nature of the document or thing.

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