Granting Leave to File Motion for Additional Discovery and Denying Motion for Extension of Time IPR2014-00245


Takeaway: In requesting authorization to file a motion for additional discovery, the moving party should narrowly tailor the discovery sought to coincide with the reasons for seeking such discovery.

In its Order, the Board granted Patent Owner’s Motion for Leave to File a Motion for Additional Discovery and denied Patent Owner’s Motion for Extension of Time of the Trial Schedule.

Patent Owner sought authorization to file a motion for additional discovery of information about a product allegedly sold by Petitioner that practices the disclosure of one of the prior art references asserted in the proceeding. Patent Owner argued that the information about the product would be relevant to what one of ordinary skill in the art would have understood the prior art reference to disclose and secondary considerations.  Petitioner opposed the request arguing that the information sought is irrelevant to the anticipation ground in this proceeding because the issue is what the prior art reference discloses, not what a later commercial product does.  Petitioner also argued that Patent Owner cannot establish that the product practices the prior art reference and the request is based on speculation.  Patent Owner’s requests would be limited to three distinct requests for production of documents and a deposition of Petitioner on three narrow topics.

The Board agreed that a motion for additional discovery is warranted, but that it should be limited in two respects. First, the Board was not persuaded that the additional information would be relevant to the anticipation grounds because whether the prior art reference anticipates the claims depends solely on the disclosure of the reference; therefore, any request should be limited to materials that would show secondary considerations of nonobviousness.  Second, the Board found that Patent Owner did not show a need for a deposition, and the request should be limited to documents only.

Next, Patent Owner requested that all of the due dates in the Scheduling Order be extended so Patent Owner may conduct its discovery. The Board was not persuaded that there is sufficient reason to extend the due dates, and Patent Owner’s delay in seeking authorization to file the motion for additional discovery weighs against granting its request.

Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245
Paper 15: Order on Conduct of the Proceeding
Dated: August 4, 2014
Patent 8,392,684 B2
Before: Justin T. Arbes and Hyun J. Jung
Written by: Arbes