Takeaway: Providing specific information gleaned from a related district court litigation that suggests that additional discovery may exist to show that there are other real parties-in-interest will increase a patent owner’s chances of getting authorization to file a motion for additional discovery.

In its Order, the Board authorized Patent Owner to file a motion for additional discovery. Patent Owner requested authorization to file a motion for additional discovery limited to the issue of whether LG Display or LG Electronics and Petitioner are privies. Patent Owner stated that it learned recently in the related district court litigation, to which Petitioner is not a party, of evidence of a supply agreement between Petitioner and LG Display or LG Electronics that may contain indemnification obligations. Patent Owner also referenced admissions of payment made in conjunction with discovery responses that may substantiate these contentions.

After hearing the positions of the parties on a conference call, the Board concluded that additional briefing is warranted. The Board authorized Patent Owner to file a motion for additional discovery limited to the supplier agreement and referred-to discovery response admissions. The Board stated that the motion should address what evidence shows that the referred to supply agreement and discovery response admissions from the related district court proceeding are relevant to determining whether LG Display or LG Electronics and Petitioner are privies, and that patent Owner should specify clearly the discovery response admissions it seeks to discover.

K.J. Pretech Co., Ltd. v. Innovative Display Technologies LLC, IPR2015-01866; IPR2015-01867; IPR2015-01868 P
aper 6: Order on Conduct of the Proceeding
Dated: November 20, 2015
Patents 8,215,816; 7,537,370; 7,434,974
Before: Thomas L. Giannetti, Miriam L. Quinn, and Beverly M. Bunting
Written by: Bunting