Takeaway: The Board may grant permission for focused discovery to ascertain whether a certain third party is a real party-in-interest that should have been named in the petition, in particular, where the petitioner’s business model implies that it may act as an agent or proxy for third parties.

In its Decision, the Board granted Patent Owner’s Motion for Additional Discovery. Patent Owner sought additional discovery from Petitioner to determine whether a third party should have been identified as a real party-in-interest in the proceedings. Petitioner, however, argued that Patent Owner failed to meet the first Garmin factor, and thus discovery should be denied.

The first Garmin factor “requires more than the ‘mere possibility of finding something useful, and mere allegation that something useful will be found’ and that the ‘party requesting discovery should already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered.’”

The Board was persuaded that Patent Owner’s request for discovery met the first Garmin factor. First, “Petitioner’s business model implies that Petitioner may act as an agent or proxy for third parties.” Second, the third party “is a client of Petitioner.” Third, Patent Owner “sued [the third party] for infringement of the patents-at-issue in these proceedings and, as of the date the instant Petitions were filed, [the third party] was time-barred under 35 U.S.C. § 315(b) from filing petitions requesting an inter partes review.” Moreover, the third party “previously filed petitions for covered business method patent review of the same patents challenged by the instant Petitions, each of which was denied.” In sum, the Board was “persuaded that the combination of factors present here justifies permitting additional discovery on the issue of whether [the third party] is an RPI.”

The Board thus granted Patent Owner’s motion for additional discovery. However, the Board did agree with Petitioner that certain discovery requests were objectionable, and thus limited the permissible discovery requests “to seeking information pertaining to whether Petitioner should have identified [the third party] as an RPI in this proceeding.”

RPX Corporation v. Applications in Internet Time, LLC, IPR2015-01750
Paper 11: Granting Patent Owner’s Motion for Additional Discovery
Dated: October 20, 2015
Patent: 8,484,111 B2
Before: Mitchell G. Weatherly and Jennifer Meyer Chagnon
Written by: Chagnon
Related proceedings: IPR2015-01751, -01752 (both concerning Patent 7,356,482 B2)