July 8, 2014

Board Allows Rare Motion for Additional Discovery

By Matthew L. Cutler, Principal

In a relatively rare grant of a Motion For Additional Discovery, in Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc. (IPR2013-00453,, Paper 40), Patent Owner sought additional discovery pertaining to its contention that the real parties-in-interest were not properly identified in the petition, by propounding three requests for production and one interrogatory.

A proponent of additional discovery bears the burden of demonstrating that additional discovery is “in the interest of justice.” Consistent with Congressional intent that inter partes review be a quick and cost-effective alternative to litigation, discovery is less expansive than that typically available in district-court patent litigation.

Citing the seminal discovery decision of Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, (IPR2012-00001, Paper 20), the Board discussed the factors important in determining whether a discovery request meets statutory and regulatory stands of being “in the interest of justice.” The mere possibility of something useful and a mere allegation that something useful will be found are insufficient. Additionally, information a party can reasonably figure out or assemble without a discovery request would not be in the interest of justice.

The Board granted Patent Owner’s request for additional discovery, in part, because Patent Owner identified “evidence tending to show beyond speculation that in fact something useful will be uncovered.” More specifically, in an affidavit submitted in the proceeding, a principal of Petitioner stated that there was a dispute regarding indemnification between Petitioner and a potential real party-in-interest. By limiting Request No. 1 to just documents “regarding the dispute referred to by [Declarant] in paragraph 3 of his declaration…,” Patent Owner’s request provided more than a mere possibility of finding something useful. Order at 6.

Patent Owner’s other discovery requests were, however, denied because Patent Owner was not able to demonstrate that such discovery was unattainable from other means and/or that it was not mere speculation that useful information could be discovered. As such, Patent Owner’s motion was only granted-in-part.