March 4, 2014

Communications Between Experts Discoverable in Inter Partes Review

By Matthew L. Cutler, Principal

Given the rarity of a granted Motion for Additional Discovery, it is worth noting the circumstances of the Board’s decision in Apple Inc. v. Achates Reference Pub., Inc., IPR2013-00080; -00081 (Paper 58), wherein an exchange of email correspondence between the experts hired by Patent Owner was ordered to be produced.

More specifically, Patent Owner filed with its Response the declaration testimony of two expert witnesses.  During depositions of the two witnesses, Petitioner elicited testimony from the witnesses that indicated that the two had exchanged emails regarding the substance of their testimony.  As previously discussed, Petitioner initially sought a ruling from the Board that such email communications constituted “routine discovery.”  The Board denied that request, but authorized a motion for additional discovery.

In its later ruling on the motion for additional discovery, the Board undertook a detailed review of the Garmin factors before deciding that Petitioner had met its burden of obtaining the requested email communications as additional discovery.  We caution that this should not be seen as a trend toward more liberal use of discovery in IPR proceedings.  The Board’s decision was exhaustive on the merits and it is clear that a party seeking discovery in inter partes review proceedings still faces an uphill battle.