Countless parties to Inter Partes Review can tell you how to lose a Motion for Additional Discovery. This is especially so for discovery motions seeking evidence to prove privity between the Petitioner and a third party in an attempt to have a Petition denied as time-barred. More valuable is an analysis of the motions that were successful….because they are so rare. In Arris Group, Inc. v. C-Cation Technologies, LLC & Level 3 Communications, IPR2014-00746, the Board granted Patent Owner’s Motion for Additional Discovery relating to an indemnification agreement sought by Patent Owner to bolster a claim that the petition was time-barred.
As is the case in any decision relating to additional discovery, the analysis began with a consideration of factors laid out in seminal case of Garmin Int’l, Inc. et al. v. Cuozzo Speed Techs LLC, Case IPR2012-00001, Paper 20, at 2-3 (PTAB Feb. 14, 2013). Here, some of the factors were undisputed, but the Board was required to determine whether something useful would be found relative to the limited discovery request made by Patent Owner. To that end, Petitioner argued that, for Patent Owner to show it is entitled to the indemnification agreement, it must first prove that Petitioner exercised control over the third party for it to be deemed in privity with Petitioner. The Board determined, however, that Patent Owner was not required to prove the underlying legal point (privity) to be granted the discovery. That would be putting the cart before the horse.
Instead, the Board determined that, under Garmin, sufficient threshold evidence had been provided that supported a finding of allowing additional discovery, including:
(1) Evidence that the indemnification agreement existed;
(2) Evidence that the third party had made indemnification claims against Petitioner;
(3) Evidence that Petitioner had contractual rights with the third party regarding exercising sole control of the litigation; and
(4) Evidence that Petitioner had resolved the indemnification claims with the third party.
Of course, this type of evidence is not present in most cases (and that is why most motions for additional discovery on the privity issue fail). It is, however, worth noting what type of evidence will be successful in these motions.