Takeaway: An important factor of whether discovery requests are “responsibly tailored and restrained in scope” is whether the party seeking discovery can demonstrate more than a mere possibility that it will obtain the evidence it seeks.

In its Decision following a conference call with the parties, the Board granted Patent Owner’s request for authorization to file a motion for additional discovery concerning whether Salesforce.com, Inc. is a real party-in-interest in the proceedings. The panel was “persuaded that further briefing would assist the Board in deciding whether to provide Patent Owner with additional discovery in this case.”

Patent Owner sought three categories of additional discovery: (1) “directed to agreements and communications between Patent Owner and Salesforce”; (2) “information regarding the length of Salesforce’s membership and any membership fees paid to Patent Owner”; and (3) “the role of Mr. Sanford Robertson, who sits on the board both of Petitioner and Salesforce.” Petitioner opposed, asserting that “Patent Owner’s previous requests for such information were not narrowly tailored or reasonable.” The parties had previously tried, but failed, to come to an agreement.

Patent Owner was permitted to file a motion for additional discovery “not to exceed ten pages and should include, as an exhibit, proposed discovery requests.” Petitioner was also “authorized to file an opposition to the motion, also not to exceed ten pages.” And if Petitioner objects to the scope of proposed discovery, “the opposition should include, as an exhibit, Petitioner’s alternative proposed discovery requests.” See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 6-7 (PTAB Mar. 5, 2013) (Paper 26) (informative).

RPX Corporation v. Applications in Internet Time, LLC, IPR2015-01750
Paper 7: Decision on Patent Owner’s Request for Authorization to File Motion for Additional Discovery
Dated: October 1, 2015
Patent: 8,484,111 B2
Before: Lynne E. Pettigrew, Mitchell G. Weatherly, and Jennifer Meyer Chagnon
Written by: Chagnon
Related proceedings: IPR2015-01751, -01752 (both concerning Patent 7,356,482 B2)