Takeaway: A party’s speculation that materials for which routine discovery is being sought “could” contain inconsistent information is not sufficient under 37 C.F.R. § 42.51(b)(1)(iii).

In its Order, the Board denied Petitioner’s request for authorization to file either a motion for additional discovery or a motion to compel Patent Owner to produce certain materials as routine discovery.  The materials of interest were requested by Petitioner in advance of an upcoming deposition scheduled with Patent Owner’s declarant.

A first set of materials requested by Petitioner encompassed all documents relied upon by Patent Owner’s declarant (Mr. John Nerenberg) in the course of preparing his declaration.  Petitioner withdrew its request for the first set of materials after Patent Owner confirmed during a teleconference that such documents had already been produced.

A second set of materials requested by Petitioner consisted of copies of four articles authored by Mr. Nerenberg and cited in the curriculum vitae attached to his declaration, which Petitioner was not able to locate on its own.  According to Petitioner, the request for a finite number of articles,i.e., four articles, would not be unduly burdensome to Patent Owner.  Also, Petitioner argued that the second set of materials “should be produced as routine discovery because they were authored by Mr. Nerenberg and because they ‘could’ contain information inconsistent with a position taken by Patent Owner in this proceeding.”

Patent Owner, in opposition, argued that Patent Owner’s request was untimely; that the requested materials were not routine discovery under any category set forth in 37 C.F.R. § 42.51(b)(1); that Petitioner had failed to show any basis upon which the requested materials should be produced as additional discovery; that Patent Owner had already produced all routine discovery; that Mr. Nerenberg did not have any of the requested information to be produced; and that “article A is a third party publication with a quote from Mr. Nerenberg, article C is a webcast (not an article) that is no longer available, and article D is not listed on Mr. Nerenberg’s curriculum vitae.”

After considering the positions of the parties, the Board concluded that Petitioner had not presented an adequate basis that would enable the Board to authorize a motion to compel routine discovery.  As stated by the Board, “Patent Owner represented that it has produced all routine discovery required by 37 C.F.R. § 42.51(b)(1), and Petitioner cited nothing to the contrary.”  Moreover, Petitioner’s indication that the requested materials “could” contain inconsistent information was merely speculative under 37 C.F.R. § 42.51(b)(1)(iii).

As for Petitioner’s request for authorization to file a motion for additional discovery, the Board found that Petitioner had failed to sufficiently demonstrate good cause as to why the discovery is needed or to show that the requested materials were “directly related to factual assertions advanced by either party in the proceeding,” in a manner that would support the filing of a motion for additional discovery.  According to the Board, Petitioner’s request in this regard was merely speculative as to what the materials might contain.

Although the Board was not persuaded that any discovery motion was appropriate under the circumstances, it did indicate that Petitioner was free to cross-examine Patent Owner’s declarant about the requested materials.  Moreover, the Board stated that if further evidence as to relevance of the requested materials came to light during the proceeding, Petitioner could request another teleconference in order to renew its request.

Westlake Services, LLC d/b/a Westlake Financial Services v. Credit Acceptance Corp., CBM2014-00008
Paper 44: Order Denying Authorization to File Discovery Motion
Dated: July 23, 2014 
Patent 6,950,807 B2 
Before: Justin T. Arbes and Gregg I. Anderson
Written by: Arbes