In Alternative Legal Solutions, Inc. v. Employment Law Compliance, Inc., the PTAB denied the Patent Owner’s motion for authorization to compel third party testimony and production of documents regarding whether a reference qualified as a “printed publication,” finding that there was not more than a mere possibility or mere allegation that something useful to the proceeding would be found, and that the request was overly burdensome. IPR2014-00562, Paper 22 (Dec. 23, 2014).

The Patent Owner sought testimony and production of documents from three individuals regarding the authentication of a prior art reference cited by the Petitioner known as City of Boston, a Massachusetts Institute of Technology (“MIT”) master’s thesis. One individual, an MIT librarian, had already provided a declaration explaining MIT Libraries’ procedures for cataloguing and shelving thesis documents, and providing details regarding whether MIT Libraries received, catalogued, and shelved the City of Boston thesis. However, the Patent Owner asserted that the information was “incomplete” and sought to compel additional details via subpoena.

The PTAB applied the Garmin factors to determine whether the request for additional discovery was in the “interest of justice.”  Specifically, the PTAB found two of the factors relevant:

  1. whether there is more than a mere possibility or mere allegation that something useful to the proceeding will be found; and
  2. whether the request is overly burdensome.

Regarding the first factor, the PTAB found that the Patent Owner’s motion did not explain what information in the MIT librarian’s declaration tended to show that the thesis was not publicly available at the relevant time, nor did the motion explain how the declaration showed “beyond speculation” that the additional information sought via subpoena would be “useful” (i.e. “favorable in substantive value” to the Patent Owner), or that the additional information even existed.

Regarding the second factor, the PTAB found that because the Patent Owner delayed in requesting authorization to compel the additional discovery, granting such authorization would put the case schedule in jeopardy. In addition, the PTAB noted that if the motion for authorization was granted, deposing the relevant third parties would impose an additional financial burden on the Petitioner.

As this decision shows, it is important to request authorization for additional discovery as soon as possible after becoming aware of the need for it, to avoid impacting the case schedule. Furthermore, motions for authorization must point to evidence or reasoning tending to show beyond speculation that something useful will be uncovered by the additional discovery.