Authorizing Motion for Additional Discovery IPR2014-0097; CBM2013-00049


Takeaway: Parties seeking additional discovery of materials should first attempt to obtain the information from other sources before filing motions for additional discovery, particularly where the materials may have been produced in a related litigation.

In its Order, the Board addressed the initial conference call, which was held for the IPR proceedings, IPR2014-00097 and IPR2014-00098. Also addressed during the call were the related CBM proceedings, CBM2013-00049, CBM2013-00050, and CBM2013-00051.

The Board first addressed the proposed scheduling changes in both the IPR and CBM proceedings. The Board granted the parties’ joint request to extend due dates in the IPR proceedings to account for holiday schedules.  The Board also granted Petitioner’s request to extend the schedule in the CBM proceedings “for a limited period of time” to address the recent U.S. Supreme Court decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, __ U.S. __, No. 13-298, slip op. (U.S. June 19, 2014).

The Board then discussed Patent Owner’s request that Petitioner either “be ordered to produce certain documents as routine discovery under 37 C.F.R. § 42.51(b)(1)(iii), or that Patent Owner be authorized to file a motion for additional discovery under 37 C.F.R. § 42.51(b)(2).” Patent Owner sought the production of the entire file history of one of Petitioner’s patent applications, which had gone abandoned and was not publicly available.  Patent Owner argued that Petitioner made statements concerning a prior art reference, Tilfors, that were inconsistent with those it made in the instant IPR proceedings.  Patent Owner had copies of certain declarations and other materials filed in the application but argued that the entire file was needed to put those declarations in context.

Petitioner opposed, arguing that Patent Owner did not establish the relevance of Petitioner’s application, and nevertheless, the entire file history had been produced in the related litigation.

The Board was not persuaded that the requested materials are discoverable as routine discovery because Patent Owner had not established that they were necessarily inconsistent with any positions advanced by Petitioner. The Board stated that Patent Owner “shall investigate other methods of obtaining the information it seeks, including a review of the documents produced in the related litigation.”  If that is insufficient to obtain the information Patent Owner seeks, then the Board authorized Patent Owner to file a motion for additional discovery and Petitioner to file an opposition.  The Board noted that Patent Owner should specifically identify what information is sought “(e.g., a copy of the original application)” and that the motion would be granted if the discovery is “necessary in the interest of justice.”

International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc., IPR2014-00097; CBM2013-00049
Papers 16 and 33: Order on Conduct of the Proceedings
Dated: June 23, 2014
Patent 7,356,498 B2
Before: Justin T. Arbes, Rama G. Elluru, and James B. Arpin

Written by: Arbes
Related Proceedings: CBM2013-00050 and IPR2014-00098 (Patent 7,980,457 B2); CBM2013-00051 (Patent 8,266,044 B2)