Mandatory Discovery is Only for Information Shown to be Inconsistent

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International Securities Exchange, LLC v. Chicago Board Options Exchange, Incorporated, IPR2014-00097, Paper 16 (June 23, 2014) the patent owner sought mandatory discovery of the prosecution history of an abandoned patent appliaction by petitioner, arguing that petitioner made arguments about the prior art that were inconsistent with its interpretation of the prior art in the Petition.  Petitioner objected that the information had previously been produced in a lawsuit between the parties, and that it was unduly burdensome to produce it again.  The Board sidestepped the question finding that there was no proof that there were inconsistent statements, and thus the discovery was not mandatory discovery.  The Board instructed the Patent Owner to investigate other methods of obtaining the information it seeks, including a review of the documents produced in the related litigation, to the extent permitted. If, after doing so, Patent Owner is unable to obtain the necessary information, Patent Owner is authorized to file a motion for additional discovery under 37 C.F.R. § 42.51(b)(2).

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