Takeaway: If one can show that documents show that a party has taken a position inconsistent with an argument it is making in the instant proceeding, then the Board may allow for discovery of those documents. 

In its Decision, the Board granted Petitioner’s Motion for Routine Discovery pursuant to 37 C.F.R. § 42.51(b)(1)(iii).  Petitioner sought production of documents concerning the development of the KLM crew rest that reference the DC-10 coat closet or any other monument with a recessed forward wall, and documents concerning the invention of the ’838 Patent that reference the KLM crew rest, the DC-10 coat closet, or any other monument with a recessed forward wall.  Petitioner contended these documents are inconsistent with a position Patent Owner has advanced in the inter partes review, namely that there was never a product or reference that included all the ’838 Patent’s claim elements prior to the invention of the patent.  Petitioner presented evidence sufficient for the Motion that the KLM crew rest included all elements of at least claim 9 of the ’838 Patent.  Therefore, the Board granted Petitioner’s Motion and ordered the documents be produced within one week of the date of the Order.

C&D Zodiac, Inc. v. B/E Aerospace, Inc., IPR2014-00727
Paper 37: Decision Granting-In-Part Motion for Discovery
Dated: April 14, 2015
Patent: 8,590,838
Before: Michael J. Fitzpatrick, Scott A. Daniels, and Carl M. DeFranco
Written by: Fitzpatrick