Takeaway: While production of a complete document is preferred, there is no obligation to produce non-relevant highly confidential business information, which may be redacted.

In its Decision, the Board granted Patent Owner’s Motion to Compel ordering production by Petitioner and authorized Patent Owner to file a motion to terminate.

Previously, after corporate reorganization, Petitioner had filed a Motion to Re-Caption the Proceeding (the “Motion”), which was granted. The Motion stated that “[b]y the Contribution Agreement, Lumentum Operations LLC assumed responsibility of ‘Assumed Action,’ including this proceeding.” That statement “was supported by a footnote that purportedly contained confidential information which referred to a non-public document identified as ‘Schedule 5.5(A) of the Contribution Agreement.’”

Patent Owner sought to compel Petitioner to produce Schedule 5.5(A) of the Contribution Agreement as “routine discovery, which includes ‘any exhibit cited in a paper.’” 37 C.F.R. § 42.51(b)(1)(i). The Board determined “that by relying upon, expressly referencing, and quoting Schedule 5.5(A) in support of its Motion, Petitioner utilized information contained in Schedule 5.5(A) as an exhibit, regardless of whether Petitioner called it an exhibit.” Thus, Petitioner “is obligated to produce and file a copy of Schedule 5.5(A) as an exhibit.” The Board explained:

However, we disagree with Patent Owner’s contention that Petitioner must produce a complete, unredacted copy of Schedule 5.5(A). There is no obligation on a party to produce non-relevant information, and Petitioner has asserted that Schedule 5.5(A) contains highly confidential business information entirely unrelated to this proceeding. Accordingly, while production of a complete document is typically preferred, we are persuaded under the specific circumstances presented that Petitioner is required to file Schedule 5.5(A) as an exhibit, but may redact any content from it not relevant to this proceeding.

Patent Owner also sought authorization to file a motion terminate based on the contention “that the Board lacked jurisdiction to institute inter partes review because the Board was not informed of the change in name of the real party-in-interest prior to entry of the institution decision.” The Board granted authorization, but noted that “there is no dispute that the proper real party-in-interest was identified when the Petition was filed, and no evidence to suggest that Petitioner has failed to identify the proper real parties-in-interest after the corporate re-organization.” See Elekta, Inc. v. Varian Med. System, Inc.,IPR2015-01401 (the Board determining that “35 U.S.C. § 312(a)(2) does not define [the Board’s] jurisdiction with respect to inter partes review proceedings”). However, “[r]ather than preclude Patent Owner from addressing what it contends is a jurisdictional issue on the present record in this proceeding, [the Board authorized] a motion to terminate.”

Lumentum Holdings, Inc. et al. v. Capella Photonics, Inc., IPR2015-00731, -00739
Paper 32: Order on Conduct of the Proceedings
Dated: February 5, 2016
Patents: RE42,368 E, RE42,678 E
Before: Josiah C. Cooks, Kalyan K. Deshpande, and James A. Tartal
Written by: Tartal