Takeaway: Discovery does not start until a trial is instituted, and the Board will not make an exception where a request for additional discovery is made close to the date that a Preliminary Response is due.

In its Order, the Board denied Patent Owner’s request to file a motion for additional discovery. Patent Owner requested additional discovery directed to the relationship between Petitioner and certain defendants, Dell and HP, in infringement lawsuits brought by Patent Owner in the Eastern District of Texas. Both lawsuits against Dell and HP were filed more than one year prior to the filing of the Petition. Patent Owner contends that Petitioner was controlling the district litigation for Dell and HP. Patent Owner based its contention on Petitioner indemnifying Dell and HP as a supplier of liquid crystal displays. Petitioner acknowledged that it indemnifies Dell and HP for patent infringement, but it does not control the District Court litigations in which they are involved.

The Board noted that Patent Owner’s request was made close to its deadline for filing a Preliminary Patent Owner Response, such that the Preliminary Responses were filed before the teleconference. Thus, because discovery in an inter partes review does not start until a trial is instituted, the Preliminary Response was already filed, and the three-month statutory period for institution is running, the Board was not persuaded to provide Patent Owner with an opportunity to seek discovery. However, Patent Owner may ask the Board to reconsider its request for additional discovery if the Petition is granted and trial instituted.

LG Display Co., Ltd. v. Innovative Display Technologies LLC, IPR2014-01357, IPR2014-01362
Paper 9: Order on Conduct of the Proceedings
Dated: December 5, 2014
Patent: 8,329,216 B2
Before: Thomas L. Giannetti, Neil T. Powell, and Beverly M. Bunting
Written by: Giannetti