PTAB Orders Petitioner’s Expert to Produce Discovery

By  Marc S. Blackman

The PTAB recently granted a Patent Owner’s motion to take additional discovery of Petitioner’s expert.  In particular, the PTAB ordered Petitioner’s expert to produce documents that identify materials he reviewed in preparing his declaration.  Luraco Health & Beauty, LLC v. Lexor Mfg., LLC, Case IPR2019-00204, Paper 18 (PTAB June 26, 2019).

In Luraco, Petitioner’s expert submitted with his report a list of materials he reviewed.  The list identified patents and one technical handbook.  Even though the central issue in the IPR related to the design and efficiency of centrifugal pumps, the identified handbook merely related to electric motors.  The Patent Owner, believing that Petitioner’s expert likely reviewed materials relating to centrifugal pumps, served a document request seeking all materials relating to the design and efficiency of centrifugal pumps Petitioner’s expert reviewed in preparing his report.  Petitioner objected to producing such discovery.

Additional discovery is rare in IPR proceedings.  To obtain additional discovery, a party must show that the discovery is “in the interests of justice.”  37 C.F.R. § 42.51(b)(2).  In making this determination, the PTAB considers the factors set forth in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-0001, Paper 26 at 6-7 (PTAB Mar. 5, 2013).  Here, primarily focusing on the first and fifth Garmin factors, the PTAB found that the requested discovery was warranted.

With respect to the first Garmin factor, the PTAB agreed with the Patent Owner that there was more than a mere possibility that the discovery would reveal useful information.  Because the scope of the opinions in Petitioner’s expert report encompassed the design of centrifugal pumps, and the identified handbook merely related to electric motors, the PTAB found that there was more than a possibility that responsive documents were in the expert’s possession.  Indeed, the PTAB noted that Petitioner did not argue that the list of materials reviewed was complete.

The PTAB further found, under the fifth Garmin factor, that there was no undue burden in producing the requested discovery.  Contrary to Petitioner’s argument, the request did not obligate the expert to produce every book in his office.  The request was narrowly tailored to only those materials actually reviewed by the expert in preparing his report.

Although additional discovery is rarely granted in IPR proceedings, Luraco is a reminder that the PTAB will grant a party discovery in appropriate circumstances.