Takeaway: In moving for additional discovery, the request should be tailored and restrained in scope.

In its Decision, the Board granted Patent Owner’s request for authorization to file a motion for additional discovery directed to evidence regarding whether certain additional parties should be listed as real parties-in-interest.

Patent Owner represented that such requests would be directed to communications between Petitioner and its members, if any, that are defendants in the district court proceeding, fees paid by any such members to Petitioner and any activities performed “in return” for any such fees, identification of any inter partes review petitions filed by Petitioner in which no member was involved in a related district court proceeding, information concerning the return on investment to members mentioned on Petitioner’s website, and the deposition transcript of Petitioner’s CEO that was filed under seal in another inter partes review. Petitioner indicated that it had offered to provide to Patent Owner discovery that it believes is narrowly tailored to the issue of real parties-in-interest in this proceeding, but that the parties were unable to come to an agreement.

The Board was persuaded that further briefing would assist it in deciding whether to permit Patent owner to obtain additional discovery. Therefore, it authorized Patent Owner to file a motion not exceeding 10 pages.  It also asked that Petitioner’s opposition include alternative proposed discovery requests.  The Board reminded Patent Owner that discovery request should be tailored and restrained in scope, and that an important factor is whether Patent Owner can demonstrate more than a mere possibility that it will obtain the evidence it seeks.

Unified Patents Inc. v. American Vehicular Sciences LLC, IPR2016-00364
Paper 6: Decision on Patent Owner’s Request for Authorization to File Motion for Additional Discovery
Dated; February 25, 2016
Patent 9,043,093 B2
Before: Benjamin D. M. Wood, Jennifer Meyer Chagnon, and Timothy J. Goodson Written by: Chagnon