In GEA Process Engineering, Inc. v. Steuben Foods, Inc., the PTAB ordered Petitioner to produce invoices from its counsel, based on Patent Owner’s argument that related entities represented by Petitioner’s counsel in the related district court litigation were real-parties-in-interest (RPIs) in the IPR proceedings. IPR2014-00041, Paper 90 (September 12, 2014) (available in redacted form as IPR2014-00041, Paper 117).

A motion for additional discovery, including a request for “Legal bills issued by Pillsbury Winthrop Shaw Pittman LLP to GPNA, Procomac, and/or GEA Group for services rendered in connection with the Proceeding,” was previously denied by the PTAB as not having established that the additional discovery was likely to uncover information useful to the instant proceedings.

However, in opposition to Patent Owner’s later briefing regarding whether Petitioner identified all RPIs in its Petitions, Petitioner referred to and relied upon a declaration of Petitioner’s expert in which the expert referred to law firm invoices.

PTAB orders law firm invoices be produced by Patent Owner

Although Petitioner argued that the invoices were protected by the attorney-client privilege and/or the work-product doctrine, the PTAB ordered Petitioner to produce the law firm invoices to Patent Owner, without reaching the waiver issue.

From the redacted September 12th order, it is unclear whether the discovery was granted:

  • as routine discovery under 37 CFR § 42.51(b)(1)(i) as “any exhibit cited in a paper or in testimony” or
  • as additional discovery under 37 CFR § 42.51(b)(2)(i) “in the interests of justice,” or
  • perhaps as additional discovery under 37 CFR § 42.51(b)(2)(ii) as “production of documents and things during cross-examination of an opponent’s witness” in light of the Patent Owner’s request for production of the invoices referencing the scheduled deposition of the expert.

Lesson learned: citing privileged documents in IPR filings can lead to their production

In any case, a clear takeaway from this decision is that if discovery of documents containing putative attorney-client privileged information and/or attorney work-product is to be avoided, such documents should not be cited in a paper filed in an IPR proceeding nor referenced by a declarant.

It should be noted that the PTAB did allow the produced invoices to be redacted with respect to “specific descriptions of services provided by Pillsbury.”  However, “general references to services provided were not to be redacted.”

Accordingly, information for which the attorney-client privilege and/or attorney work-product privileges might otherwise be asserted was ordered to be produced, underscoring that such documents should not be cited in a paper filed in an IPR proceeding nor referenced by a declarant if this information is to be protected.