In IPR2014-00727, Petitioner C&D Zodiac, Inc. seeks review of U.S. Patent No. 8,590,838 owned by B/E Aerospace, Inc. The '838 patent relates to a "spacewall" lavatory. In connection with the IPR proceeding, the Petitioner sought, as "Routine Discovery," documents that it contends are inconsistent with positions the Patent Owner has advanced in the IPR. The Board granted the discovery over the Patent Owner's opposition.

Pursuant to 37 C.F.R. § 42.51(b)(1)(iii), "[u]nless previously served, a party must serve relevant information that is inconsistent with a position advanced by the party during the proceeding concurrent with the filing of the documents or things that contains the inconsistency." 

In its opposition, the Patent Owner reiterated the standard for Routine Discovery:

Zodiac has the burden to show that its discovery (a) will uncover relevant information "known to [B/E] to be inconsistent" with a position B/E advanced in this IPR and (b) is "narrowly directed" to uncovering that "specific information."Garmin, IPR2012-00001, Paper 26, at 4; Amneal Pharm., IPR2014-00360, Paper 48, at 5 (discovery denied because "Petitioner has not explained to us adequately how the [information sought] will present relevant information that is inconsistent with a position advanced by Patent Owner."); 37 C.F.R. § 42.20 (c).

The Board relied on the Patent Owner's statement that "Petitioner's obviousness assertions hang entirely on generalizations about a desire for space efficiency--desires that have purportedly existed for decades and yet never resulted in any product or reference that included all the '838 patent's claim elements." Specifically, the Petitioner contended that:

The two prior art references at issue in this proceeding - Betts and the Orange Book - describe a coat closet having a recessed forward wall for the McDonnell Douglas DC-10 aircraft. In its Response, B/E maintains that a person of ordinary skill in the art would not have applied the recessed forward wall of the DC-10 coat closet to lavatories or other enclosures. As evidenced by the declaration of Paul Sobotta submitted herewith as Exhibit 1011, B/E's patentability argument is directly contradicted by an enclosure unit developed in the early 1990s by Flight Structures, Inc. ("FSI"), a company that B/E later acquired. FSI in fact applied the recessed forward wall of the DC-10 coat closet to an entry for a crew rest for KLM Royal Dutch Airlines that is modeled on a lavatory. As evidenced by B/E's disclosures in other patent applications, B/E was aware of the KLM crew rest when it filed its Response.

Thus, the Petitioner contended that the following documents were inconsistent with the positions advanced by the Patent Owner in its Response:

  1. Documents concerning the development of the KLM crew rest that reference (a) the DC-10 coat closet or (b) any other monument with a recessed forward wall; and 
  2. Documents concerning the development of the alleged invention of the '838 Patent or B/E's "Spacewall" lavatory (including any documents of Robert Papke or Don Cook), that reference (a) the KLM crew rest, (b) the DC-10 coat closet, or (c) any other monument with a recessed forward wall.

In its opposition, the Patent Owner unsuccessfully argued (1) that it never took inconsistent positions regarding the KLM crew rest and a DC-10 coat closet, (2) that the Petitioner's declaration did not support any inconsistency, and (3) that the discovery was overbroad and improper.

In rejecting B/E's arguments, the Board sided with Petitioner C&D Zodiac and held that "Petitioner presents evidence--sufficient for purposes of its Motion--that what it refers to as the "KLM crew rest" included all elements of at least claim 9 of the involved U.S. Patent No. 8,590,838. See Exs. 1011, 1012." As such, the Board ordered the sought-after documents produced within one week of its order.

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The Board's determination that the sought-after discovery was routine and relevant illustrates that the Board's identification of inconsistent positions advanced in a party's paper is not narrowly limited to inconsistentstatements about the cited prior art, as B/E argued. Thus, it is important for parties to carefully delineate their positions in their papers without overstating them, so as not to open the door for discovery on such positions. In addition, there must be some basis, as the Board determined existed here, that the party has the specific discovery sought in its possession or control.

C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727 (PTAB Apr. 14, 2015) (Paper 37) (A.P.J. Fitzpatrick)