Granting Motion for Leave to File a Motion for Additional Discovery IPR2014-00041; IPR2014-00043; IPR2014-00051; IPR2014-00054; IPR2014-00055


Takeaway: Even where the Board believes there is sufficient reason to grant additional discovery, the Board will only grant additional discovery if the proposed discovery is narrowly focused.

In its Order, the Board granted Patent Owner leave to file another motion for additional discovery on the identification of real parties-in-interest. Patent Owner had previously requested additional discovery on this issue, and been denied. In denying a request for rehearing on whether to grant additional discovery, the Board ordered the parties to try to reach agreement about appropriate and narrowly focused additional discovery. No agreement was reached.

Petitioner argued that Patent Owner waived the right to seek additional discovery relating to the identification of real parties-in-interest by not raising the issue prior to trial institution. To support this argument, Petitioner argued that whether all real parties-in-interest have been properly identified is a “petition completeness” issue that must be raised before institution, and is not a “standing” issue that may be raised at any time during the trial. The Board declined to decide whether the issue is a “petition completeness” issue or a “standing” issue, because the Board believed the discovery sought is relevant to either circumstance. If a failure to properly identify a real party-in-interest is not a standing issue, the discovery sought by Patent Owner may be relevant to possibly sanctioning Petitioner for failing to properly identify the real parties-in-interest in its petitions.

In granting leave to file another motion, the Board informed Patent Owner that the proposed discovery requests should be narrowly focused, but do not have to be limited to discovery relating to Petitioner’s sister company. The Board further emphasized that the evidence that persuaded the Board that additional discovery may be warranted was Petitioner’s statement in the district court litigation that the instant review proceedings would simplify the district court litigation by statutorily limiting Petitioner and its sister company’s invalidity defenses. Thus, the Board suggested that the discovery requests should focus on that specific issue.

During the same telephone call, the Board authorized entry of the Board’s default Protective Order, granted Petitioner authorization to file a motion to seal portions of a deposition transcript, and stated that Patent Owner’s requirement that it confer with the panel before filing a motion to amend was satisfied.

GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00041, IPR2014-00043, IPR2014-00051, IPR2014-00054, IPR2014-00055
Papers 32, 31, 31, 28, 24: Order Granting Leave to File Motion for Additional Discovery
Dated: May 23, 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: Elluru