/>iTakeaway: The Board may deny a motion to compel discovery if the information requested is not inconsistent with a position advanced by the nonmoving party, and the moving party lacks threshold evidence beyond mere speculation that something useful will be discovered.
In its Order, the Board denied Patent Owner’s motion to compel discovery of “all evidence of copying of the wheelchair embodying Patent Owner’s claims under review” because Patent Owner failed to justify its request as either routine or additional discovery.
Patent Owner argued that its motion was justified as routine discovery because the testimony of Petitioner’s expert witness regarding Petitioner’s wheelchair design process appeared, in Patent Owner’s view, unreliable. Additionally, Patent Owner raised concerns about the inability of Petitioner’s CEO to answer certain questions regarding the extent of Petitioner’s analysis of Patent Owner’s products during Petitioner’s own product development process.
The Board noted that routine discovery requests must be directed toward information inconsistent with a position the nonmoving party advances during the proceeding. The Board determined, however, that Petitioner’s witness testimony was not inconsistent with Petitioner’s positions. Thus, while the Board indicated that the reliability of Petitioner’s witnesses may ultimately affect the weight given to their respective testimonies, it nevertheless concluded that Patent Owner’s motion was not justified as routine discovery.
Patent Owner had also asserted that its request was necessary in the interest of justice, the standard for additional discovery. In support, Patent Owner argued that because Petitioner denied copying Patent Owner’s products, Petitioner should not be allowed to withhold the evidence that Patent Owner needed to evaluate the veracity of that claim.
The Board rejected this argument as well, observing that a party moving for additional discovery must possess threshold evidence beyond mere speculation that the discovery will reveal something useful. Patent Owner’s evidence, however, consisted entirely of the testimony of Petitioner’s CEO, who stated only that Petitioner visually inspects and drives its competitors’ products while developing its own. Because that testimony did not indicate that Petitioner dissembles or copies competitors’ products, the Board concluded that Patent Owner’s discovery request was based on mere speculation that something useful would be discovered. Thus, the Board held that Patent Owner’s request did not meet the requirements for additional discovery.
Finally, the Board noted that Patent Owner’s motion was directed to inappropriate subject matter because the request for “all evidence of copying of the wheelchair embodying Patent Owner’s claims” sought information relating to infringement, an issue not before the Board.
Permobil Inc. v. PrideMobility Products Corporation, IPR2013-00407
Paper 43: Decision Denying Patent Owner’s Motion to Compel
Dated: July 2, 2014
Patent 8,408,598 B2
Before: Brian J. McNamara, James B. Arpin, and Matthew R. Clements
Written by: McNamara
