Takeaway: Just as in deciding motions for additional discovery, the Board is guided by the factors set forth in Garmin v. Cuozzo when deciding motions to compel production.

In its Decision, the Board denied Patent Owner’s Motion to Compel production of unredacted documents, or in the alternative, production of unredacted documents for in camera review.

The Board had granted Patent Owner’s request for additional discovery, and Petitioner’s subsequent production included redactions of material that was allegedly protected by attorney-client privilege or the common-interest doctrine, or was nonresponsive confidential business information.

Patent Owner argued that Petitioner had not established the existence of any agreement creating a common-interest. Petitioner represented to the Board that, throughout the related litigation, communications between the relevant parties “were subject to an oral, and later written, Joint Defense Agreement.”  In addition, Petitioner represented that the redaction based on attorney-client privilege was with respect to an email between a vice president and in-house counsel in connection with seeking legal advice.  According to Petitioner, communications regarding the relevant indemnity dispute had been produced, and only portions protected by common interest were redacted.

The Board indicated that its decision was guided by the factors set forth in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case No. IPR2012-00001, Paper 26, 6–7 (PTAB, Mar. 5, 2013).  The Board stated that Petitioner’s representations were signed by a registered practitioner and credited them as made with the certifications under 37 C.F.R. § 11.18(b).  Thus, the Board concluded that the assertions of attorney-client privilege and common-interest were consistent with its previous order.

Patent Owner also argued that Petitioner provided no reasons for its redactions of a telephone conference login and price information, and noted that the parties were bound by the terms of the default protective order. The Board held that Patent Owner had not established “convincingly more than a possibility of finding something useful in the redacted business information.”  Agreement with respect to the protective order does not diminish the importance of the Garmin factors.

Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2014-00453
Decision on Motion to Compel Production
Dated: May 20, 2014
Patent 5,810,029
Before: Jennifer S. Bisk, James B. Arpin, and Patrick M. Boucher
Written by: Boucher
Related Proceeding Bennett Regulator Guards, Inc. v. Atlanta Gas Light Company, Civil Action 5:12-cv-1040 (N.D. Ohio)