Takeaway: The likely existence of indemnification agreements and litigation documents potentially relevant to a petitioner’s privity that would time bar the petition by itself is not sufficient to order discovery under routine discovery, but may be sufficient under additional discovery.

In its Order, the Board granted in part Patent Owner’s Motion for Routine or Additional Discovery. Patent Owner alleged that the Petition was time-barred based on Petitioner’s privity with a defendant in a litigation and requested discovery of “Petitioner’s indemnification and control of the legal defense in the ongoing litigation involving the challenged patent” under either routine discovery or additional discovery.

With respect to the request for routine discovery, Patent Owner alleged that the requested information should be made available by Petitioner because “it is likely to be inconsistent with Petitioner’s statement that it ‘is not barred or estopped from requesting inter partes review.’”  However, the Board was not persuaded, and found that Patent Owner had not established that Petitioner failed to serve any relevant information that is inconsistent with positions advanced in the Petition.  The Board could not say whether any information was inconsistent without knowing the specifics of the information.

Regarding the request for additional discovery, the Board granted in part Patent Owner’s requests. The Board first granted the requests for indemnification agreements, finding that the requests established that the additional discovery is “in the interest of justice” under the five factors in Garmin Int’l, Inc. v. Cuozzo Speed Techs LLC, Case IPR2012-00001.

First, the Board found that Patent Owner provided evidence showing (1) the existence of an indemnification agreement; (2) that the defendant to the litigation made indemnification claims against Petitioner; (3) contractual obligations for Petitioner to exercise sole control of the litigation may have existed; and (4) Petitioner provided the defendant with “an unqualified defense.” Patent Owner also made the request in a timely fashion – less than one month after the Petition’s notice of filing being accorded.  The Board was not persuaded by Petitioner’s argument that the indemnification agreements by themselves would not establish privity, noting that Patent Owner need not prove privity at this time.  The Board also disagreed with Petitioner’s arguments regarding the remainingGarmin factors, finding that Petitioner had not identified another route for Patent Owner to learn about the relationship with the litigation already being closed.  In addition, Petitioner did not establish that production would be overly burdensome because Petitioner should have ready access to the documents.

Patent Owner also requested as additional discovery communications between Petitioner and the defendant regarding the indemnification agreements. The Board denied this request, finding that it would be overly burdensome to answer.  In particular, the Board found that the breadth of the request would lead to extensive disputes that would interfere with the schedule of the trial.  Furthermore, Patent Owner did not establish why the requested information was needed.

Patent Owner also sought discovery of Petitioner’s and the defendant’s retention agreements as well as documents regarding legal bills – alleging that the defendant replaced its original counsel at the direction of Petitioner. The Board denied the request for not establishing that something useful would be found and for being overly burdensome.

Finally, the Board denied Patent Owner’s request for indemnification agreements between Petitioner and other defendants in the same ongoing litigation. The Board found that Patent Owner had not presented any evidence that discovery of any useful information is more than a mere possibility.

General Electric Company v. Transdata, Inc., IPR2014-01380
Paper 15: Order Granting in Part Patent Owner’s Motion for Routine or Additional Discovery
Dated: November 12, 2014
Patent: 6,903,699 B2
Before: Lynne E. Pettigrew, Frances L. Ippolito, and Christopher M. Kaiser
Written by: Kaiser