The Patent Trial and Appeal Board (PTAB) recently issued a decision demonstrating the type of showing a party must make to obtain discovery regarding the real parties-in-interest in an inter partes review. In Coalition for Affordable Drugs II LLC v. NPS Pharms., Inc., the patent owner sought to obtain documents, interrogatory responses, and a deposition to determine whether additional parties-in-interest should have been named in the petition. The board considered the patent owner’s request in light of five factors: (1) whether there is more than a possibility that something useful will be discovered, (2) that the requests don’t seek the other party’s litigation positions, (3) the ability to get the information through other means, (4) whether the discovery requests are easily understandable, and (5) the requests are not overly burdensome. 

The board found most of the patent owner’s requests to be unduly broad and encompassed information whose usefulness was only speculative. For example, one request would have required the petitioner to provide the name and address of every one of its investors, shareholders, trustees, officers, and directors. The board denied these requests because “it is insufficient for the patent owner to merely establish the possibility of finding something useful.” Nevertheless, the board allowed discovery of agreements that would allow another party to control any aspect of the inter partes review or to review papers filed in the proceeding. The board found that this narrow, highly-relevant inquiry sufficiently met the five factors set forth above.

Coalition for Affordable Drugs II LLC v. NPS Pharms., Inc., IPR 2015-00990, Paper No. 14 (PTAB July 2, 2015).