The Patent Trial and Appeal Board recently designated a decision granting a request for additional discovery as an informative opinion.  Informative opinions are not binding; they rather provide guidance on rules and practices.  In this decision, the PTAB granted a patent owner’s motion for additional discovery concerning a privity defense in an IPR even though a panel previously held in an earlier IPR that the same discovery did not yield evidence sufficient to meet the patent owner’s burden of proof on the same privity defense.

In this proceeding, the patent owner filed a motion seeking production of indemnification agreements stemming from a lawsuit between the patent owner and a third party.  The patent owner asserted the requested discovery (in conjunction with other evidence) would make a compelling showing of privity between the petitioner and the third party and establish the petitioner’s IPR petition is time-barred under 35 U.S.C. § 315(b).  The patent owner previously sought and obtained that same discovery in an earlier IPR involving the patent owner and the petitioner. In that earlier IPR, the PTAB determined that, based on the then-existing evidence of record, § 315(b) did not bar institution of the proceeding. The petitioner opposed the patent owner’s discovery motion.

Discovery in post-grant proceedings like IPRs is available if it is “necessary in the interest of justice.” 35 U.S.C. § 316(a)(5); 37 C.F.R. § 45.51(b)(2). The five-factor test of Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, Paper 26 (P.T.A.B. Mar. 5, 2013) dictates whether a discovery request meets this threshold.  Here, the petitioner only challenged the discovery request under first Garmin factor: the “mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient to demonstrate that the requested discovery is necessary in the interest of justice.”  The petitioner specifically argued the patent owner’s discovery request was futile because of claim preclusion—“something useful will not be found by the sought-after discovery” because the patent owner “cannot relitigate the privity issue in this proceeding.”

The PTAB was unpersuaded by the petitioner’s argument and held that claim preclusion did not bar the patent owner’s privity defense.  “When applying claim preclusion to a defense [like privity], . . . the defense is not the ‘claim’ for purposes of determining whether the second action is the same as the first, but instead ‘claim’ is used in the sense of the facts giving rise to the suit.” Here, because the two proceedings challenged different patent claims, they were based on different sets of facts. Therefore, the doctrine of claim preclusion did not bar the patent owner from raising the second privity defense. And because the PTAB was otherwise persuaded the patent owner’s narrowly tailored discovery request was necessary in the interest of justice, the PTAB granted the patent owner’s discovery request.

This case provides guidance on the types of reasonable and narrowly tailored requests for additional discovery concerning privity and real party-in-interest issues that the Board frequently grants.  More importantly, however, it clarifies how the doctrine of claim preclusion will be applied to defenses like privity in post-grant proceedings.

ARRIS Group, Inc. v. C-Cation Technologies, LLC, IPR2015-00635, Paper 10 (P.T.A.B. May 1, 2015)