Board Grants Discovery Regarding RPI Issues, PTAB Litigation Blog

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In Cavium, LLC v. Alacritech, Inc., Case IPR2018-00401 (PTAB Nov. 20, 2018) (Paper 24), the PTAB granted a Patent Owner’s motion for additional discovery relating to real party-in-interest. The split-panel decision is interesting because both the majority and dissenting opinions expound upon the interplay between the Board’s discretion to grant additional discovery and the Board’s obligation to consider the entirety of the administrative record to determine the real party-in-interest of an IPR. In the case, the Patent Owner had sued several other companies for patent infringement over a year prior to the filing of the IPR by the Petitioner. The petitioner had intervened in the district court litigation due to an indemnification obligation to one of the defendants. Seeing an opportunity for dismissal of the IPR under 35 U.S.C. § 315(b), the Patent Owner moved for additional discovery of documents relating to indemnity and joint defense relationships between the Petitioner and the companies who had been sued by the Patent Owner.

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