Takeaway: The Board will apply a “necessary in the interest of justice” standard in deciding whether to grant a motion for additional discovery.

In its Order, the Board authorized Patent Owner to file a motion for additional discovery under 37 C.F.R. § 42.51(b)(2). Also, the Board authorized Petitioner to file an opposition as well as a motion to expunge for the purpose of replacing certain exhibits.

Patent Owner had previously sought authorization to file a motion for additional discovery to depose Petitioner’s Declarants Dr. Takashi Shibanuma and Robert E. Low, whose testimony Petitioner had relied upon in its Reply to Patent Owner’s Response. Because the parties had since reached agreement as to Mr. Low’s testimony, Patent Owner’s proposed motion for additional discovery now related solely to a requested deposition of Dr. Shibanuma.  The sought-after testimony from Dr. Shibanuma related to a Declaration of his submitted in Reexamination Control Nos. 95/002,189 and 95/002,204 on July 26, 2014, in relation to a different U.S. patent than the one at issue in this proceeding.  The Board indicated that cross-examination of Dr. Shibanuma was not routine discovery under § 42.51(b)(1)(ii) because his Reexamination Declaration was not new testimony prepared for purposes of this inter partes review.

The Board applied a “necessary in the interest of justice” standard in deciding whether to grant Patent Owner’s motion for additional discovery, and considered the factors outlined in Garmin Int’l Inc. et al. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, Paper 26, slip op. at 6-7 (PTAB March 5, 2013).  According to Patent Owner, Petitioner had relied on Dr. Shibanuma’s Declaration in its Reply to support a contention in response to an argument that Patent Owner had made to the contrary.  The Board ended up authorizing Patent Owner to file a motion for additional discovery in regard to the requested deposition of Dr. Shibanuma, which Petitioner was authorized to oppose.  The Board advised that the motion should comply with the standards in the Garmin case, and indicated that “[t]he request for discovery will not be granted if it is unduly broad or requests information that is irrelevant to either the subject matter addressed in Petitioner’s Reply as it relates to Dr. Shibanuma’s Declaration, or the Declaration itself.”

Petitioner had also requested authorization to file a motion to expunge in order to remove and replace certain exhibits submitted with Petitioner’s Reply. It was Petitioner’s position that such exhibits were inadvertently or incorrectly uploaded (e.g., an incorrect document was uploaded).  The Board authorized Petitioner to file the motion.

Mexichem Amanco Holdings S.A. de C.V. v. Honeywell International, Inc., IPR2013-00576
Paper 31: Order on Conduct of the Proceeding 
Dated: August 26, 2014 
Patent: 8,444,874 B2 
Before: Linda M. Gaudette, Francisco C. Prats, and Jacqueline Wright Bonilla 
Written by: Bonilla