Takeaway: Constraints imposed by a protective order in a related district court litigation does not relieve a party from providing reliable, specific evidence and information sufficient to establish that the requested additional discovery is necessary in the interest of justice.

In its Order, the Board denied Patent Owner’s Motion for Additional Discovery of documents regarding alleged secondary considerations and real parties in interest identified by Petitioner. The Motion requested 25-50 documents that were produced as confidential information in a co-pending district court action. Patent Owner based its request on hearsay statements of Patent Owner’s un-named district court litigation counsel that these documents will provide evidence of secondary considerations and activities and interrelationships of various Daifuku corporate entities. Patent Owner argued that it is unable to provide further information because of constraints imposed by a protective order entered in the co-pending district court litigation.

The Board concluded that Patent Owner had not provided “reliable, specific evidence and information sufficient to establish that the requested additional discovery is necessary in the interest of justice.” Specifically, the Board noted that Patent Owner did not provide any evidence, information, or persuasive argument tending to show that Petitioner failed to identify a real party in interest. Also, with regard to the documents regarding secondary considerations, the Board indicated that the power to ease constraints imposed by the District Court Protective Order lies with the District Court, and without more information there is an insufficient showing to support Patent Owner’s request for production. The Board did mention that if the District Court Protective Order issue is resolved prior to Patent Owner’s Response date, then Patent Owner could refile its motion for additional discovery of secondary considerations documents.

Daifuku Co., Ltd. and Daifuku America Corp. v. Murata Machinery, Ltd., IPR2015-00083; IPR2015-00085; IPR2015-00088

Paper 17: Order on Conduct of Proceedings

Dated: July 2, 2015

Patent: 8,197,172 B2; 7,771,153 B2; and 7,165,927 B2

Before: Ken B. Barrett, Barry L. Grossman, and Brian P. Murphy

Written by: Murphy