PTAB Orders Production Of Final Infringement Contentions From Related Litigations Because They Were Inconsistent With Patent Owner’s Response – Patent

Petitioners moved for an order requiring Patent Owner to produce
discovery comprising Final Infringement Contentions from related
district court litigations between the parties. Petitioners set
forth two independent bases for requested discovery: (1) the Final
Infringement Contentions should be produced as
“additional” discovery under 37 C.F.R. §
42.51(b)(2)(i); or (2) the Final Infringement Contentions were
required “routine” discovery under 37 C.F.R. §
42.51(b)(1)(iii). The Patent Trial and Appeal Board
(“PTAB”) granted Petitioners’ motion as additional
discovery, but declined to reach a decision on Petitioners’
alternative basis under routine discovery.

A party seeking additional discovery during inter
partes review (“IPR”) proceedings must demonstrate
that it is “necessary in the interests of justice.” In
assessing whether a party has met this standard, the PTAB looks to
five factors articulated in Garmin Int’l Inc. v. Cuozzo
Speed Techs. LLC, IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013).
Here, the PTAB found that all five Garmin factors
supported granting Petitioners’ motion.

First, Petitioners established there was more than a
possibility that the requested discovery would yield useful
information because the Final Infringement Contentions provide an
indication of Patent Owner’s understanding of the ‘835
Patent and it was undisputed that Patent Owner took different
positions regarding claim language. While the PTAB did not rule on
whether those positions were in fact inconsistent, the
“acknowledged differences” were sufficient to support a
finding that the requested discovery is in the interests of
justice. Furthermore, because Petitioners’ counsel
already had the requested discovery in their possession from the
related litigations, this was not a fishing expedition for
something that might not exist. Second, Petitioners were
not trying to ascertain the underlying basis for Patent Owner’s
litigation positions. Third, the Final Infringement
Contentions would be unavailable unless Petitioners’ motion was
granted and the Board might need access to those complete
contentions should Petitioners’ substantive briefing assert
arguments related to alleged inconsistencies. Fourth,
Patent Owner readily understood what Petitioners were requesting
for additional discovery in the IPR proceeding. Fifth, it
would not be burdensome for Patent Owner to produce the Final
Infringement Contentions in this IPR proceeding.

Practice Point: Discovery is limited in IPR
proceedings, and the PTAB will only authorize additional discovery
when necessary in the interests of justice. A party is more likely
to meet this standard where the request is limited in scope, the
moving party is already in possession of the requested materials
from related proceedings, and access to the requested materials by
the PTAB may be necessary for a complete record (e.g., to
determine whether a party has taken inconsistent positions
regarding claim scope).

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