/>iTakeaway: Parties seeking additional discovery must already possess evidence tending to show beyond speculation that something useful will be discovered.
In its Order, the Board denied Patent Owner’s Motion for Leave to File Motion for Additional Discovery. The Board was not persuaded that Patent Owner had supplied sufficient evidence showing that additional discovery was likely to reveal information relevant to the current proceeding.
Patent Owner suspected that Petitioner was coordinating its legal strategy with other entities involved in litigation over the ’536 Patent, and argued that such coordination would make those entities real parties-in-interest or parties in privity with Petitioner, thereby implicating estoppel following a final written decision in the current proceeding. For support, Patent Owner claimed that Sprint’s invalidity arguments in Evolutionary Intelligence, LLC v. Sprint Nextel Corporation, 5:13-cv-04513-RMW (N.D. Cal), bear a similarity to Petitioner’s challenges. Patent Owner did not, however, offer any specifics as to the alleged similarities or the extent of the alleged coordination. Moreover, Patent Owner did not limit its proposed discovery to evidence of coordination with Sprint, but rather sought to investigate whether joint defense agreements existed between Petitioner’s and any other entity that Patent Owner is suing in connection with the ’536 Patent.
The Board rejected Patent Owner’s argument on multiple grounds. First, it observed that a party seeking additional discovery must already possess evidence tending to show beyond speculation that something useful will be discovered. It disagreed with Patent Owner that Sprint’s filing of invalidity contentions that resemble Petitioner’s arguments would be sufficient evidence to justify additional discovery on the matter. Second, it noted that, according to Office Patent Trial Practice Guide, 77 Fed. Reg. at 48760, participation in a Joint Defense Group is insufficient in itself to show that two parties are in privity or are real parties-in-interest. Third, it concluded that even if the alleged similarities to Sprint’s invalidity contentions were sufficient to warrant discovery into any coordination between Petitioner and Sprint, there would still be insufficient evidence to authorize discovery into coordination between Petitioner and any other entities against whom Patent Owner is litigating. Fourth, it reasoned that the estoppel issue is not ripe for discovery because the Sprint proceedings are currently stayed, and Patent Owner does not have any other proceedings before the Office. Therefore, there is no ongoing proceeding in which estoppel could apply.
Apple, Inc. v. Evolutionary Intelligence, Inc., IPR2014-00086
Paper 13: Order Denying Patent Owner’s Request to File Motion for Additional Discovery
Dated: June 03, 2014
Patent 7,010,536
Before: Kalyan K. Deshpande, Trevor M. Jefferson, Brian J. McNamara, Neil T. Powell, and Gregg I. Anderson
Written by: McNamara
