Even Limited Discovery Remains Elusive

In GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00041,Paper 23;  IPR2014-00043, Paper 25; IPR2014-00051, Paper 22; IPR2014-00054, Paper 19; IPR2014-00055, Paper 15 (April 22, 2014), the board denied patent owner’s request for additional discovery regarding the real party in interest, finding that the patent owner had not met the burden of proving what the requested discovery would prove.

However, in Unified Patents, Inc. v. Clouding IP, LLC, IPR2013-00586, Paper 12 (April 22, 2014), the patent owner sougth to propound five interrogatories about the real party in interest.  The Board appeared include to allow the discovery in view fo the information the patent owner was able to muster, but wanted to see the five interrogatories first.

The Board flatly rejected the petitioner’s argument that the right to discovery was waived since the patent owner did not seek it prior to institution, noting that: “Not having asked for additional discovery prior to institution of trial does not waive Patent Owner’s opportunity to ask for additional discovery after institution of trial.”

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.