Takeaway: In supporting a motion to compel additional discovery, the party seeking discovery must explain how the evidence and argument provided shows that it will uncover something useful that supports its theory.

In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery regarding the identity of any real parties-in-interest. Patent Owner sought a copy of the engagement or retainer agreements between counsel for Petitioner and various third parties, legal bills issued by counsel for Petitioner regarding services rendered in connection with this proceeding, patents or printed publications provided by third parties to Petitioner related to the patents-in-suit, an explanation of third party involvement in filing and preparing the Petition, and the identity of all individuals and entities that participated in preparing the Petition.  Patent Owner contended that this information was relevant to determine whether certain third parties were real parties-in-interest in this proceeding.  Patent Owner contended that if in fact the third parties were real parties-in-interest, then the proceedings should be terminated for failure to identify the third parties and because of the one-year bar.

The Board stated that discovery in an IPR is limited, and that a party seeking discovery beyond what is expressly permitted by the rule “must show additional discovery is in the interests of justice.” Citing to Garmin Int’l, Inc. v. Cuozzo Speed Techs., IPR2012-00001, Paper 20, the Board stated that an important consideration is whether there is more than a “mere possibility” or “mere allegations that something useful [to the proceeding] will be found.”  Therefore, the party seeking discovery must come forward with factual evidence or support for the request.

In support of the Motion, Patent Owner asserted that a third party report states that Petitioner and another third party are wholly owned by the third party, and that the third party manages legal and financial matters of Petitioner. Patent Owner also noted that in co-pending litigation, Petitioner and third parties share the same legal counsel, and various employees of the companies were identified as individuals with knowledge of the proceeding.  Further, in joint motions to stay the district court proceedings, Petitioner admitted that a third party is a real party in interest, and there is a principal-agent relationship between Petitioner and a third party based on sales in the United States.

The Board stated that whether a non-party is a real party-in-interest is a fact-dependent question that depends upon whether the relationship is “sufficiently close such that both should be bound by the trial outcome and related estoppels.” The Board stated that during the conference call, Patent Owner noted that there was an indemnification agreement between Petitioner and third parties, but the Motion is silent on that issue.  The Board then found that the evidence presented by Patent Owner is just mere allegation and speculation, and that Patent Owner has not explained how that evidence shows that Patent Owner will uncover something useful that supports its theory that there are other real parties-in-interest.

GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00041, IPR2014-00043, IPR2014-00051, IPR2014-00054, IPR2014-00055
Papers 23, 25, 22, 19, 15: Decision on Patent Owner’s Motion for Additional Discovery
Dated: April 22, 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 D. DeFranco
Written by: Bunting