Takeaway: In a set of related proceedings with different petitioners, the Board authorized a motion and oppositions thereto discussing whether documents held by non-parties in some of the proceedings and related to secondary considerations should be compelled as additional discovery.

In a first Order, the Board granted authorization for Patent Owner to file a 7-page motion for additional discovery and for Petitioner and two third parties whose documents had been requested and who are Petitioners in related proceedings each to file a 7-page opposition. In a second Order, the Board granted Patent Owner’s request for an enlargement of time to file its Response in each of the instant proceedings such that if Patent Owner’s motion for additional discovery is denied, it will get 5 business days to file its Response and if Patent Owner’s motion for additional discovery is granted, it will get 5 business days from the day the production is complete to file its Response.

During a conference call that included Petitioner, Patent Owner, and three third parties that are each petitioners in related proceedings, Patent Owner’s request for authorization to file one or more motions for additional discovery was discussed. Patent Owner indicated that, in related proceedings with some of the third parties and Petitioner, the Board had ordered additional discovery of a limited number of documents from Petitioner and one of the third parties. Patent Owner was now requesting the same documents from Petitioner and the third party be produced in each of its proceedings, including a proceeding that does not include Petitioner or the third party in question. Additionally, Patent Owner is seeking similar documents from the petitioner in the proceeding that did not include Petitioner or the third party in question for use in that proceeding as well as the other related proceedings. The third parties in each related proceeding argued that because it is not a party in the proceeding, it should not be compelled to submit documents absent a subpoena. The Board authorized briefing by all parties affected, providing that the non-parties submit their briefs “in PDF format by email to trials@uspto.gov, copying all parties in the email and indicating into which proceeding the paper is to be entered.”

During the conference call, Patent Owner also requested an extension of time to file its Response. Petitioner argued that the time should not be extended, because that would provide Patent Owner with an opportunity to preview Petitioner’s Reply in a related proceeding. Further, Petitioner pointed to “Toyota Motor Corp. v. Hagenbuch, Case IPR2014-00123 (PTAB July 16, 2014) (Paper 14) as an instance in which a similar situation was addressed by granting the patent owner an extension to file its Patent Owner Response when the patent owner agreed to stipulate to an extension for the petitioner to file its Reply in a related proceeding, such that said Reply would not have been filed prior to the Patent Owner Response.” The Board determined that “Patent Owner’s interest in having its motion for additional discovery decided prior to filing its Patent Owner Response outweighs Petitioner’s interest in denying Patent Owner the opportunity of previewing Petitioner’s Reply” in the related proceedings, because “Petitioner elected to participate in both the instant proceedings and the first set of proceedings and, thus, could have foreseen the possibility of Patent Owner having the opportunity to preview papers from the first set of proceedings.” In particular, “based on the original schedules in these matters, Petitioner’s Reply in the first set of proceedings would have been due two weeks prior to Patent Owner’s Response in the instant proceedings.” Accordingly, the Board granted Patent Owner an extension of time to file its Response.

Hilti, Inc. v. Milwaukee Electric Tool Corporation, IPR2015-01164; IPR2015-01165; IPR2015-01166

Papers 15: Order on Additional Discovery; Paper 16: Order on Conduct of the Proceeding

Dated: February, 16, 2016

Patents 7,554,290 B2; 7,944,173 B2; 7,999,510 B2

Before: Grace Karaffa Obermann, Patrick R. Scanlon, and Carl M. DeFranco

Written by: Scanlon