Additional Discovery is Still Hard to Come By


GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00051, paper 17 (April 3, 2014, the Board authorized Patent Owner to file a motion for additional discovery, directed solely to the real parties in interest in the instant proceedings, no later than April 7, 2014.  The Board cautioned the patent owner that a motion for additional discovery is unlikely to be granted if it is unduly broad and is written in the style of a district court litigation request for “all documents in the possession, custody, or control of GEA that discuss, refer to or relate to . . . .” Such a request is unlikely to be found sufficiently narrowly tailored under the factors considered in deciding whether discovery is “necessary in the interest of justice.”  The Board directed the patent owner to Garmin Int’l, Inc. et. al. v. Cuozzo Speed Techs. LLS, IPR2012-00001; (“Decision on Motion for Additional Discovery”) (Paper 26); Apple Publishing v.Achates Reference , Inc., IPR2013-00080 (Paper 18); Broadcom Corp. v. Telefonaktiebolaget LM Ericsson, IPR2013-00601 (Paper 23); Nichia Corp. v. Emcore Corp. , IPR2012-00005 (Paper 19).

The Board said that the motion should address what evidence shows that petitioner and the identified entities have discoverable evidence that is relevant to determining whether any of those entities are real parties in interest of Petitioner who have been served with a complaint for patent infringement such that a section 315(b) bar would apply.


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