The Patent Trial and Appeal Board (PTAB) provided an important order in the ARRIS Group, Inc. v. C-Cation Technologies, LLC inter partes review (IPR) and has designated it as an “informative opinions” on the USPTO websiteSee ARRIS Group, Inc. v. C-Cation Technologies, LLC, IPR2015-00653, Paper 10 (PTAB May 1, 2015).  The order provides a glimpse into a rare occasion when the PTAB grants a motion for additional discovery.

The PTAB granted Patent Owner’s motion for additional discovery finding that an earlier proceeding did not preclude Patent Owner from its narrowly tailored discovery request for necessary information.  Petitioner argued that an earlier proceeding should preclude Patent Owner from its discovery request because Patent Owner could have raised the issue earlier (whether or not Petitioner was in privity with another unidentified party).  See Id. at 3 citing Opp. 4.  This argument did not persuade the PTAB. 

The PTAB reasoned that there was no preclusion because while the earlier proceeding (IPR2014-00746) dealt with the same patent, that proceeding dealt with different issues and different patent claims.  Id. at 3-4.  Petitioner’s res judicata argument also did not persuade the PTAB for similar reasons, namely that the different claims in the two IPRs were directed towards different inventions.  Id. at 4-5.  The PTAB then relied on the Garmin factors for additional discovery, and issued the Order in favor of Patent Owner.  Id. at 6-7.1

Patent Owner’s analysis of the Garmin factors provides helpful guidance to better understand how to file a proper motion for additional discovery in an IPR.  First, Patent Owner focused on the fact that its request for additional discovery came from “more than a possibility and mere allegations.”  Case IPR2015-000635, Paper 7, p. 5-7 (PTAB April 8, 2015).  Patent Owner cited Petitioner’s admission in the record that the requested documents actually existed.  Id. at 5.  Patent Owner then focused on how a request for these types of documents fell within the permitted scope of discovery.2  Id.citing IPR2014-00746, Paper 15; see also Atlanta Gas Light Co. v. Bennet Regulator Guards, Inc., IPR2013-00453, Paper 40 at 5-6 (PTAB Apr. 23, 2014).  Specifically, the requested documents directly related to Patent Owner’s defense that the IPR was time-barred due to Petitioner’s privity with Comcast in an earlier case.  Id.  Patent Owner then reminded the PTAB that this request was within the scope of discovery for documents that actually existed.  Id.  Patent Owner then focused on the request’s narrow scope.  The request only sought “indemnification agreements that reference or are contingent on Petitioner’s ability to control the litigation.”  This factor provides the most useful guidance for Practitioners when determining how to shape a Motion for Additional Discovery.

Patent Owner then turned to how the requested discovery did not overlap or seek to determine Petitioner’s litigation positions in district court cases.  The narrowly targeted request only sought indemnification agreements useable in Patent Owner’s IPR defense.  Id. at 7.  Patent Owner also reminded the PTAB that this information was not available in any district court case.  Id. 

Practitioners’ Motions for Additional Discovery should be narrowly tailored, surgical strikes for documents that go directly towards a claim or defense in a PTAB proceeding.  It helps, like in this case, when the requesting party knows that the documents actually exist.  The point of a motion for additional discovery in those cases is to determine what the documents actually say.  Additional discovery in a PTAB proceeding is not to figure out what you do not know.  Instead, movants should make requests with surgical precision.  It is easier to show – as Patent Owner did – that these types of requests are 1) narrow in scope and 2) necessary for justice.  Patent Owner’s analysis of the other Garmin factors kept the PTAB’s focus on the narrowness and necessity of its request.