Communications Between Experts not “Routine” Discovery in Inter Partes Review Proceedings

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iStock_000013492145XSmallThe Board’s views on the metes and bounds of discovery in inter partes review proceedings continue to take shape with each new decision.  In Apple, Inc. v. Achates Reference Publishing, Inc., IPR2013-00080 and 00081 (Paper 49) (December 23, 2013), the Board considered the issue of whether emails exchanged between two expert witnesses for a party are “routine” discovery.

More specifically, in the depositions of Patent Owner’s two expert witnesses, testimony came to light that suggested that the experts each relied upon communications from the other in forming their opinions submitted in the proceeding.  As such, Petitioner called for a conference call with the Board to seek production of the emails as “routine” discovery pursuant to 37 CFR § 42.51(b)(1).  To further consider the issue, the Board instructed the parties to submit the relevant deposition testimony.

Upon consideration of that testimony, and the parties’ arguments, the Board declined to consider the email exchange “routine” discovery. It did, however, grant Petitioner authorization to file a motion for additional discovery, directing Petitioner to the now ubiquitous Garmin decision, that governs motions for additional discovery.