iTakeaway: If a party is going to argue that additional discovery would be unduly burdensome to produce, it must provide a factual basis for the argument.
In its Decision, the Board granted in part and denied in part Patent Owner’s Motion for Additional Discovery regarding information pertaining to whether Cardicocom, LLC is a real party-in-interest in these proceedings. In April 2013, Patent Owner filed a lawsuit against Cardiocom alleging infringement of the ’605 Patent and the ’249 Patent. In July 2013, Cardiocom filed petitions seeking inter partesreview of the claims of those patents in IPR2013-00439 and IPR2013-00460. In August 2013, Petitioner announced it had acquired Cardiocom, and in December 2013, Cardiocom filed a notice in both of its IPR proceedings acknowledging that Medtronic is now a real party-in-interest, but Cardiocom should remain a real party-in-interest as well. The Cardiocom petitions were subsequently denied in January 2014. In March and April 2014, Petitioner filed the petitions in the instant proceedings stating that it was the sole real party-in-interest. Trial was then instituted.
In an inter partes review proceeding, the party seeking discovery beyond what is expressly permitted by the rules must show that the additional discovery is “necessary in the interest of justice.” 35 U.S.C. § 316(a)(5). Patent Owner bears the burden of demonstrating that it is entitled to the discovery, and must explain with specificity the discovery requested and why it is necessary in the interest of justice. In determining whether the additional discovery is necessary in the interest of justice, the Board looks at various factors such as whether the party seeking additional discovery already is in possession of evidence tending to show beyond speculation that something useful, or favorable in substantive value to a contention of the moving party will be discovered and whether the requests would be overly burdensome to answer.
The Board examined the first category of discovery – communications between Petitioner and Cardiocom regarding the preparation or filing of the petitions in the instant proceedings. Patent Owner alleged that Petitioner failed to identify Cardiocom in order to avoid the potential estoppel effects of 35 U.S.C. § 315(e)(2), as well as to avoid the one-year time bar of 35 U.S.C. § 315(b). Patent Owner argued the following facts demonstrate more than a mere possibility of finding something useful: (1) Cardiocom previously filed its own petitions challenging the patents at issue and naming itself as the real party-in-interest; (2) Petitioner has the same counsel and declarant, and relies on the same prior art references and arguments, as Cardiocom did in the prior proceedings; (3) Cardiocom is the party accused of infringement in the district court case; and (4) Cardiocom represented in the earlier proceedings that both it and Petitioner were real parties-in-interest. Petitioner stated that it does not believe any responsive documents exist, and, even if they did, Patent Owner has not provided any evidence that Cardiocom controls the action of Petitioner in this proceeding, and Petitioner has an interest in this proceeding beyond that of Cardiocom because Petitioner and Patent Owner exchanged correspondence where Patent Owner eluded to possible infringement by Petitioner beyond the Cardiocom products.
The Board was persuaded that Patent Owner had demonstrated more than a mere possibility of discovering something useful. The Board noted specifically that both Petitioner and Cardiocom were identified as real parties-in-interest in the earlier proceeding, and that Petitioner’s argument regarding control ignores the fact that there may be more than one real party-in-interest. Further, Petitioner’s statements regarding the communications it had with Patent Owner are not supported by the record and do not refute the argument that Cardiocom was a real party-in-interest in the original proceedings and a defendant in a district court case. The Board also stated that the requests are narrowly tailored and not likely to be overly burdensome because they are limited to communications “regarding the preparation or filing” of Petitioner’s IPRs. While Petitioner said that responding would take some time and expense, it did not state how many sources it would need to search, how many individuals it would need to question, or how much it might cost to locate potential communications between the two companies. Given that Petitioner does not believe any documents exist, the Board was not convinced that the burden to search and locate any responsive materials would be undue. The Board also noted that the other factors set forth in Garmin support Patent Owner’s request because Patent Owner does not seek litigation positions of Petitioner, Patent Owner is unable to obtain the materials on its own, and the requests are easily understandable.
The Board then turned to Patent Owner’s request for Petitioner’s purchase agreement with Cardiocom. Patent Owner argued that this is likely to result in useful information because the agreement was executed after the filing of the original petitions and during the pending district court case, and it may confirm that Cardiocom is responsible for the costs of the petitions in the instant proceedings. Petitioner stated that this request is based only on speculation that the agreement might contain something useful, and the agreement contains sensitive information regarding the sale. The Board found that given the facts discussed, there is more than a mere possibility that something useful will be discovered and it would not be unduly burdensome for Petitioner to produce a copy of the agreement. However, to protect the confidentiality, the Board ordered Petitioner to review the agreement and determine whether anything mentions or otherwise pertains to the petitions. If so, Petitioner must produce a copy of the agreement to Patent Owner and redact the unresponsive portions. If it does not, Petitioner must represent as much to Patent Owner.
Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., IPR2014-00488; IPR2014-00607
Paper 29: Decision on Patent Owner’s Motion for Additional Discovery
Dated: November 5, 2014
Patents: 7,769,605 B2; 7,870,249 B2
Before: Stephen C. Siu, Justin T. Arbes, and Miriam L. Quinn
Written by: Arbes
