In an order granting a patent owner’s motion for additional discovery, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) ordered a petitioner to produce specific documents identified in the patent owner's Motion. Arris Group Inc. v. C-Cation Technologies LLC, Case IPR2015- 00635 (PTAB, May 1, 2015) (Pettigrew, APJ.).

The petitioner, Arris Group, filed a petition requesting inter partes review (IPR) of claims of a patent that had been the subject of an earlier IPR (IPR2014-00746) involving the same parties and different claims of the same patent.

In the first IPR proceeding, the patent owner, C-Cation, had sought discovery of an indemnification agreement that it argued would show that the petitioner was barred from challenging the patent under 35 U.S.C. § 315(b). According to the patent owner, the agreement would show that the petitioner had a business relationship with a third party that the patent owner had sued over the patent at issue more than one year before the petitioner filed the IPR petition. The Board granted the discovery request, but determined that the first IPR was not barred based on the evidence presented.

In the second IPR proceeding, C-Cation again sought discovery of “indemnification agreements referencing or contingent on Petitioner's ability to control” the litigation with the third party, claiming to have new information that, together with the requested discovery, would be sufficient to show that the second IPR was barred. The petitioner argued that the discovery request should be denied because the same discovery was permitted in the first IPR and the Board had already determined that the first IPR was not barred by any relationship between the petitioner and the third party.

The Board nevertheless granted the discovery request, noting that the first IPR involved different claims and the patent owner had identified new information that could support its § 315(b) argument. The Board concluded that, in view of the “very limited request,” the patent owner had satisfied a threshold amount of evidence sufficient to deem the discovery to be necessary in the interests of justice.

Practice Note: Parties seeking additional discovery in IPR proceedings should make limited and specific requests and be prepared to show why the requested discovery is necessary.