Takeaway: A party may not be able to obtain draft versions of claim charts relied upon by the other party’s declarant as additional discovery if the request for authorization to seek additional discovery is untimely or is not likely to identify something useful in the draft claim charts.

In its Order, the Board declined to authorize Patent Owner’s proposed motion to request additional discovery relating to certain claim charts associated with proceeding IPR2015-00636 or proceeding IPR2015-00637.

According to the Board, the additional discovery which Patent Owner had sought to request related to “the facts and materials on which Petitioner’s declarant, Mr. Occhiogrosso, relied in forming his opinions of unpatentability in these cases and which purportedly have not been produced by Petitioner as routine discovery.” In this connection, Patent Owner had contended that in depositions taken of Petitioner’s declarant Mr. Occhiogrosso on November 12, 2015 (for IPR2015-00637) and on November 13, 2015 (for IPR2015-00636), Mr. Occhiogrosso had indicated that he had relied upon claim charts produced in each of IPR2015-00637 and IPR2015-00637 in forming his opinions.

Patent Owner thus sought to obtain copies of purported drafts of these claim charts, which had not already been produced. According to Patent Owner, “the Board had ordered similar discovery in Apple, Inc. v. Achates Reference Publishing, Inc., Case IPR2013-00080 (PTAB Jan. 31, 2014)[.]” Petitioner opposed Patent Owner’s motion, arguing that the request for additional discovery was untimely; that Patent Owner had not shown that the requested documents would be useful; that “Mr. Occhiogrosso signed his declaration close to the filing date of the petitions in each case[,]” and that the facts in the cited Apple proceeding were distinguishable from those in the instant matter.

The Board considered Patent Owner’s motion in view of the well-known Garmin factors in order to determine whether the additional discovery was “necessary in the interest of justice.” The Board concluded that the requested additional discover was not necessary in the interest of justice at least because: (1) Patent Owner’s request for authorization was untimely; and (2) only one day had transpired between the date on which Mr. Occhiogrosso had signed his declarations and the date on which the Petitions were filed. Points such as these caused the Board to conclude that “Patent Owner [had] not shown more than a mere possibility of finding something useful in the documents.” Moreover, the Board found that the reasoning in the Apple case was of limited probative value under the facts in the instant proceedings, since the Board in Apple had only authorized discovery of emails exchanged between declarants.”

CaptionCall, LLC v. Ultratec, Inc., IPR2015-00636, IPR2015-00637
Paper 20: Order on Conduct of the Proceeding
Dated: January 26, 2016
Patents: 8,917,822 B2 (IPR2015-00636); 8,908,838 B2 (IPR2015-00637)
Before: William V. Saindon, Barbara A. Benoit, and Lynne E. Pettigrew
Written by: Benoit