Wavemarket Inc. d/b/a Location Labs v. Locationet Systems Ltd.: Denying Motion for Additional Discovery IPR2014-00199
Friday, August 15, 2014

Takeaway: A request for additional discovery regarding real parties-in-interest typically will not be supported by evidence of privity because the issue of privity is more expansive than the issue of real parties-in-interest.

In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery that sought discovery into indemnification obligations of Petitioner based on the contention that the Petition did not identify all real parties-in-interest.

Patent Owner asserted that multiple parties accused of infringement in several litigations have an interest in the instant proceeding and a relationship with Petitioner. Particularly, Patent Owner pointed out that the existence of indemnification obligations and common interest agreements had been admitted and that the parties allegedly related to Petitioner shared the same counsel.  Thus, Patent Owner argued that the provided evidence supported finding privity.

With respect to the first Garmin factor, the Board was not persuaded that the evidence “demonstrates beyond speculation that something useful will be uncovered and will factually support [Patent Owner’s] contention that the Petition fails to identify all real parties-in-interest.”  In particular, the Board noted that Patent Owner’s arguments and evidence focused on privity, which “is more expansive, encompassing parties that do not necessarily need to be identified in the petition as ‘a real party-in-interest.’”  The Board stated that the “evidence may demonstrate that something useful will be uncovered that factually supports a finding of privity.”  However, because privity is more expansive than real parties-in-interest, the Board found the evidence to be insufficient.  Patent Owner did not demonstrate beyond speculation that it would find something useful regarding “funding, direction, control, or ability to exercise control” of Petitioner by the third parties.

The Board also found that the fifth Garmin factor, that the request not be overly burdensome to answer, weighed against granting the additional discovery.  In particular, Patent Owner’s requests were found to overly broad and burdensome and could “place a significant burden on meeting the time schedule” of the proceeding.  The Board found that the remaining factors did not weigh for or against granting the discovery.

Upon weighing all the factors, the Board determined that the requested discovery was not “necessary in the interest of justice.”

Wavemarket Inc. d/b/a Location Labs v. Locationet Systems Ltd., IPR2014-00199
Paper 34:  Decision Denying Patent Owner’s Motion for Additional Discovery Dated: August 11, 2014
Patent: 6,771,970 B1
Before: Kristen L. Droesch, Glenn J. Perry, and Sheridan K. Snedden
Written by: Droesch

 

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