Takeaway: A request for additional discovery to obtain information that is allegedly inconsistent with the opposing party’s position should explain how the additional documents (1) would be applied, and (2) would be necessary in the interests of justice.

In its Decision, the Board denied Petitioner authorization to file any discovery motion.

Petitioner requested authorization to file a motion to compel Patent Owner to produce certain materials as routine discovery or a motion for additional discovery. Petitioner asserted that Patent Owner had relevant information that is inconsistent regarding the positions Patent Owner adopted in its Response. Patent Owner argued that Petitioner’s request is untimely and overbroad, and that Petitioner had not shown a basis for producing the requested items as routine or additional discovery.

The Board had directed Petitioner to provide by email a list of the specific items it would request in a motion, if authorized. The Board, however, was not persuaded that Petitioner had shown a basis for authorizing a motion to compel routine discovery or for additional discovery. The Board stated that Petitioner had not explained sufficiently why the additional documents it seeks would be inconsistent with positions taken by Patent Owner regarding what the Vellacott reference teaches. Further, the Board stated that Petitioner did not explain sufficiently how it could demonstrate that producing the requested materials would be “necessary in the interest of justice” to justify a motion for additional discovery.

TRW AUTOMOTIVE U.S. LLC v. MAGNA ELECTRONICS, IPR2015-00436
Paper 27: Decision Motion for Leave
Dated: January 15, 2016
Patents: 8,599,001
Before: JUSTIN T. ARBES, BART A. GERSTENBLITH and FRANCES L. IPPOLITO
Written by: Arbes