September 9, 2015

PGR Order Offers Insight Into Successful and Unsuccessful Discovery Requests

By Matthew L. Cutler, Principal

Parties to inter partes review and post grant review proceedings have continued to struggle to find the right formula in successfully navigating the PTAB’s requirements for a motion for additional discovery. In American Simmental Assoc. v. Leachman Cattle of CO, LLC, PGR2015-00003, the Board addressed a number of discovery requests in considerable detail, including addressing the Garmin factors. The following provides examples of document requests and interrogatories that were successful…and unsuccessful.

 

 

Discovery requests that were granted by the Board:

Relating to Real-Party-In-Interest Issues:

Request for Production No. 2: A copy of any invoice, requests for reimbursement, or the like received or provided by or on behalf of Petitioner or either Petitioner Principal requesting payment of or reimbursement for the post-grant review filing (including request fees and post-institution fees) paid in the PGR Proceedings.

Request for Production No. 3: A copy of the email(s) sent by Petitioner to “ASA membership and the industry” referenced in Exhibit 2011 and a copy of each “response” received by Petitioner.

Request for Production No. 5: Agreements and proposals for agreements, and documents reflecting discussions of either, to which Petitioner is or was a party, that concern the PGR Proceedings or the Challenged Patents.

Request for Production No. 6: Documents constituting or relating to communications (e.g., calendar entries, transcripts, notes, invoices, summaries) involving, on the one hand, Petitioner or either Petitioner Principal and, on the other hand, an Interested Party that concern the PGR Proceedings, including (a) communications relating to an Interested Party’s funding of or involvement (including the preparation or filing of the petition) in the PGR Proceedings and (b) communications relating to the retention or destruction of documents or communications concerning an Interested Party’s funding of or control or direction over any aspect of the PGR Proceedings.

Interrogatory No. 2: Identify all Person(s) to whom Petitioner Counsel-of-Record submits its invoices or bills to, other than to Petitioner but including, without limitation, IGS.

Interrogatory No. 3: Identify all Person(s) (excluding Petitioner and Petitioner Counsel-of Record) that have provided support in the form of drafting or reviewing and commenting on the petitions filed in the PGR Proceedings. For each such Person, identify the Person by name and last known address and the date(s) and description(s) of any such assistance such Person provided.

Interrogatory No. 4: Identify any communication between Petitioner and an Interested Party not reduced to a tangible form and not otherwise identified in any document produced in response to Request for Production No. 6, in which such Interested Party discusses with Petitioner the funding, preparation, or filing of the PGR Proceedings. For any such communication, describe the topic, the individuals between whom the communications occurred, and the approximate date of communication.

Relating to Secondary Considerations:

Request for Production No. 9: Documents constituting or relating to (a) evaluations of Reputation Feeder Cattle (including its benefits) by Petitioner or any Interested Party or (b) communications between Petitioner and any Interested Party describing or discussing the benefits of or otherwise evaluating Reputation Feeder Cattle.

Request for Production No. 11: Documents constituting or relating to (a) comparisons of Feeder Profit Calculator to Reputation Feeder Cattle (including their respective benefits) and (b) communications between Petitioner and any Interested Party concerning how Feeder Profit Calculator improves upon existing calculators.

Interrogatory No. 5: Identify any communication between Petitioner and an Interested Party not reduced to a tangible form and not otherwise identified in any document produced in response to Request for Production No. 9 or 11 relating to any comparison between Feeder Profit Calculator and Reputation Feeder Cattle. For any such communication, describe the topic, the individuals between whom the communications occurred, and the approximate date of communication.

Relating to Bias of Petitioner’s Expert:

Request for Production No. 14: A copy of the 2013 Membership Directory identified by Mr. Schafer in Paragraph 3 of Exhibit 2005.

Interrogatory No. 6: Identify the total compensation received by Dr. Spangler from Petitioner, on an annual, agreement-by-agreement basis, since January 1, 2010.

Interrogatory No. 7: Identify whether Dr. Spangler is a member of Petitioner, the approximate date he became a member, any roles and capacities he has served or acted in while a member of Petitioner (e.g., treasurer, board member), and the approximate date of each such role or capacity.

Discovery requests that were NOT granted by the Board:

Request for Production No. 1: Documents (e.g., invoices, requests for reimbursement) sufficient to show all “support” received by Petitioner in the form of (a) funds, reimbursements, and other consideration in relation to the funding of the PGR Proceedings (including for payment of attorneys’ fees) or (b) drafting or reviewing and commenting on the petitions filed in the PGR Proceedings.

Request for Production No. 4: Documents relating to the deliberations leading to and reasons why Petitioner filed the petitions in the PGR Proceedings. Excluded from the scope of this request are privileged communications and drafts between Petitioner and Petitioner Counsel-of-Record found in such counsel’s files, except insofar as they reflect communications involving a Person other than Petitioner.

Request for Production No. 7: Documents identifying and describing any feeder profit calculator or similar system that Petitioner had developed or otherwise worked on before May 10, 2013, including the feeder profit calculator or similar system that Wade Schafer represented to Patent Owner on or around May 10, 2013, had been “shelved” by Petitioner.

Request for Production No. 8: Documents describing the deliberations leading to and reasons why Petitioner stopped work on or “shelved” any feeder profit calculator or similar system identified in Request for Production No. 7.

Request for Production No. 10: Documents describing the deliberations leading to and reasons why Petitioner started work on Feeder Profit Calculator on or around May 10, 2013.

Request for Production No. 12: Documents describing the expected financial benefit to Petitioner or Petitioner’s members from the Feeder Profit Calculator, including documents describing the monetary subsidies offered to users of the Feeder Profit Calculator and the amount of such monetary subsidies.

Request for Production No. 13: Agreements and proposals for agreements, and documents reflecting discussions of either, to which Petitioner, on the one hand, and Dr. Spangler, on the other hand, are or were parties pursuant to which Dr. Spangler received or expects to receive compensation or other consideration, including (a) any employee, contractor, or consulting agreements with Dr. Spangler and (b) any expert retention agreement with Dr. Spangler relating to the PGR Proceedings.

Interrogatory No. 1: Identify all Person(s) (excluding Petitioner) that have provided support in the form of funds, reimbursements, or other consideration to Petitioner or Petitioner Counsel-of-Record in connection with the PGR Proceedings. For each such Person, identify the Person by name and last known address and the date(s) and amount(s) of any such funds, reimbursements, or other consideration such Person provided.

Looking for more examples of successful discovery requests, check out these cases:

Parkervision, IPR2014-00946, Paper 25; Medtronic, Inc., IPR2014-00488, Paper 25.