July 20, 2015

PTAB Designates New “Informative Opinion”

When the PTAB considers one of its own decisions to be “informative,” it is always worth taking note. On Friday, July 17th, the Board designated its opinion in Arris Group, Inc. v. C-Cation Techs., IPR2015-00635 as informative, and we discuss its content below.

The Arris decision was a rare grant of a Motion for Additional Discovery relating to a the issue of privity between Petitioner and a third party who is barred from filing an IPR petition pursuant to 35 USC § 315(b). As a preliminary issue, the Board addressed Petitioner’s argument that the motion for additional discovery, which sought evidence relative to the 1-year bar of § 315(b), was barred because the privity issue had been resolved as part of an adverse judgment in a previous IPR between the parties. The Board disagreed, finding that the PTAB rules do not dictate that decisions in one proceeding have preclusive effect in subsequent proceedings. Order at 4. Further, res judicata did not apply because the previous IPR dealt with different claims than were at issue in the present IPR. Id. 

Turning to the discovery actually requested, the Board found that it was narrowly tailored and in the interest of justice. Specifically, Patent Owner only sought indemnification agreements referencing Petitioner’s ability to control co-pending litigation with the third party who would be barred from bringing an IPR. Given the narrowly-tailored request, the Board found that production of those agreements was in the interests of justice. The Board’s notification regarding the decision indicated that it was informative because of the narrowly-tailored request from Patent Owner. Given that guidance, we also reproduce the granted request below, for reference:

“Agreement(s) between [Petitioner] and [Third Party] under which [Third Party] requested indemnification for the claims brought against [Third Party] in the Texas Litigation that reference (or are contingent on) [Petitioner’s] ability to control the litigation.”