Order Regarding Request for Additional Discovery – IPR2013-00586


Takeaway: Refraining from requesting additional discovery prior to institution of trial does not waive a party’s opportunity to ask for additional discovery after institution of trial.

In its Order, the Board indicated that it wanted to review certain interrogatories proposed by Patent Owner before deciding whether to authorize Patent Owner’s proposed Motion for Additional Discovery.  Thus, the Board ordered Patent Owner to file a set of proposed interrogatories, five or fewer, within one week of the Board’s Order.

Patent Owner had asserted that because Petitioner had failed to identify Google, Inc. – which had been sued under the ‘799 patent – as a real-party-in-interest, Petitioner’s petition was time-barred under 35 U.S.C. § 315(b).  In support of this position, Patent Owner requested five or fewer focused interrogatories on the specific issue of the real-party-in-interest, similar to those previously authorized in IPR2014-00171.  Petitioner opposed Patent Owner’s request on the basis that Patent Owner had not asked for discovery on this point prior to institution of trial.  The Board found that this argument presented by Petitioner in opposition to Patent Owner’s request was without merit.  Additional discovery may be requested after institution of trial.

Unified Patents, Inc. v. Clouding IP, LLC, IPR2013-00586
Paper 12: Order on Conduct of Proceeding

Dated: April 22, 2014
Patent 6,738,799 B2
Before: Jameson Lee, Justin Busch, and Rama G. Elluru

Written by: Lee
Related Proceeding: IPR2014-00171