Denying Request for Rehearing of the Denial of Additional Discovery IPR2014-00041; IPR2014-00043; IPR2014-00051; IPR2014-00054; IPR2014-00055


Takeaway: Even in situations where additional discovery might be justified, the requested discovery must be narrowly tailored.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Board’s denial of its Motion for Additional Discovery, holding that there was no abuse of discretion. The Board also ordered the parties to try to reach an agreement about an appropriate scope of additional discovery or initiate another conference call, if agreement cannot be reached.

The Board had denied Patent Owner’s request for additional discovery of the identify of all real parties-in-interest relevant to defenses under 35 U.S.C. § 312(a)(2).  In its Request for Rehearing, Patent Owner argued that the Board had “misapprehended and/or overlooked” evidence that allegedly established “beyond mere speculation or conjecture that Procomac and/or GEA Group are real parties in interest or privies of GEA.”  In particular, Patent Owner pointed to a statement made by Petitioner, GEA, in a concurrent district court proceeding that the instant IPR proceedings would simplify the district court litigation by “statutorily limiting GEA’s [collectively, GEA and Procomac] invalidity defenses.”  Patent Owner argued that the statement constituted an admission by Petitioner that statutory estoppel under 35 U.S.C. § 315(e)(2) would apply both to Petitioner and Procomac, making Procomac either a petitioner, real party-in-interest, or privy of Petitioner.

The Board stated that it had fully considered Patent Owner’s arguments and evidence from the co-pending litigation in its decision denying the requested discovery. Rather than misapprehending or overlooking this evidence, the Board noted, citing to IPR2012-00001, Paper 20, that Patent Owner’s request failed to satisfy the “Garmin factors” based on the “overbreadth of the discovery sought.”  In particular, the Board had held that Patent Owner’s request was not “adequately tailored specifically to GEA’s statement made in the concurrent District Court proceeding, nor to discovery concerning Procomac’s ‘control and/or funding.’”  Thus, the Board was not persuaded that its decision was an abuse of discretion.

Still, the Board noted that additional discovery could be justified, if narrowly tailored to Petitioner’s statement in the co-pending litigation and to Procomac’s control and/or funding. The Board ordered the parties to seek agreement about appropriate and narrowly focused discovery, and if no agreement could be reached, authorized the parties to initiate another conference call.

GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00041; IPR2014-00043; IPR2014-00051; IPR2014-00054; IPR2014-00055
Paper 29 in IPR2014-00041: Decision on Patent Owner’s Request for Rehearing Under 37 C.F.R. §
Dated: May 12, 2014
Patents 6,945,013 B2; 6,475,435 B1; 6,209,591 B1; 6,481,468 B1; 6,536,188 B1
Before: Rama G. Elluru, Beverly M. Bunting, and Carl M. DeFranco
Written by: Bunting