Takeaway: A party must serve on the other party any documents that are inconsistent with a position advanced by that party during the proceeding as part of routine discovery. 

In its Decision, the Board granted Petitioner’s Motion for Routine Discovery.  Specifically, Petitioner sought production of a PowerPoint presentation and a Word document that it contends are inconsistent with several statements Patent Owner made in support of its Patent Owner Response regarding Patent Owner’s commercial products, which it alleges practices all of the challenged independent claims. 

Patent Owner responded that there are no inconsistencies between the documents and its statements, and that the two documents are highly confidential and production of them so close to deposition of Patent Owner’s declarant will unnecessarily increase the complexity of the proceedings.

The Board was persuaded that the documents are within the routine discovery and not persuaded that producing the documents presents a significant burden on Patent Owner.  Addressing the confidentiality concerns, the Board noted that neither document needed to be filed with the Board at this time, and should they be filed, a proposed protective order may be entered.  

Actifio, Inc. v. Delphix Corp., IPR2015-00014; IPR2015-00016; IPR2015-00019; IPR2015-00025; IPR2015-00026; IPR2015-00034; IPR2015-00100; IPR2015-00108; IPR2015-00128 

Paper 31: Decision on Motion to Compel Routine Discovery 

Dated: October 2, 2015 

Before: Howard B. Blankenship, Jennifer S. Bisk, Patrick R. Scanlon, and Minn Chung

Written by: Bisk