In Arris Group, Inc. v. C-Cation Technologies, LLC, the Patent Trial and Appeal Board (PTAB) took the rare step of granting a party’s request for additional discovery.  IPR2014-00746, Paper 15 (July 24, 2014).

This decision illustrates the evidentiary showing required to justify additional discovery.

Patent owner C-Cation sought production of indemnity agreements between petitioner Arris Group and non-party Comcast. C-Cation believed the agreements would establish that Arris Group was in privity with Comcast in a previous litigation involving the challenged patent, which would time bar Arris Group’s IPR petition.

A party seeking any discovery beyond the narrow scope routinely allowed in IPR proceedings must show that further discovery is “in the interest of justice,” which the Board analyzes within the framework of the Garmin factors.

Here, the Board focused on the first Garmin factor, framing the issue as whether C-Cation had “brought forth a threshold amount of evidence tending to show that the indemnification agreement supports the contention” regarding privity. The Board answered in the affirmative, pointing to several of C-Cation’s exhibits supporting its position.

In response to Arris Group’s argument that the indemnification agreements could not establish privity, the Board emphasized that it was not deciding the ultimate issue of privity at this juncture. It was sufficient that C-Cation made the threshold showing to satisfy the first Garmin factor.  Because Arris Group did not address other Garmin factors in its opposition, the Board addressed only the first factor.

Beyond C-Cation having met its evidentiary burden, the Board also justified its decision by pointing to the fact that C-Cation’s request was very limited and was brought early in the proceedings.

This decision underscores that a party requesting additional discovery should 1) make the request as early as possible, 2) make the request specific and limited, and 3) submit evidence showing how the additional discovery will help its case.

It also shows that while a threshold evidentiary showing is required, the Board will not require the requesting party to prove its ultimate contention before it can seek evidence that supports the contention.