Takeaway: Requests for additional depositions must be necessary in the interest of justice and movant should provide specific, narrow topics to be discussed during the requested depositions.

In its Decision, the Board denied Petitioner’s Motion for Additional Discovery. Petitioner’s Motion requested depositions of “Bosch personnel.” Patent Owner had filed a declaration, in which the expert concluded that a product demonstrated commercial success based on statements made by various “Bosch personnel.” Petitioner requested that Patent Owner identify the “Bosch personnel” and make them available for deposition.

The Board had previously agreed that a motion for additional discovery was warranted under the circumstances. The Board had previously instructed that in the motion, Petitioner needed to show that the depositions were “necessary in the interest of justice” and identify “what specific issues would be addressed.” Petitioner provided five examples of specific issues to be addressed, all of which were broad topics to potentially discuss during a deposition. Thus, the Board determined that the request was overly broad and burdensome.

Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc., IPR2013-00431; IPR2013-00449; IPR2013-00468
Paper 45: Decision on Motion for Additional Discovery
Dated: May 12, 2014
Patents 7,291,186 B2; 7,840,420 B2; 7,516,192 B2
Before: Stephen C. Siu, Justin T. Arbes, and Miriam L. Quinn
Written by: Siu