Authored by Michelle Carniaux and Michael E. Sander
In litigation, parties often use broad statements to summarize their themes or attack an opposing party’s position, but in an inter partes review trial, broad statements regarding the state of the art prior to the invention can inadvertently open the door to discovery. In a recent decision, the Board used a patent owner’s broad statement as a reason to compel discovery of documents allegedly inconsistent with that statement. See IPR2014-00727, No. 37 Decision (April 14, 2015).
In the beginning of April, C&D Zodiac, Inc. (“Zodiac”) filed a motion to compel Patent Owner B/E Aerospace (“B/E”) to produce as “routine discovery” information allegedly inconsistent with positions taken by B/E in its Patent Owner’s Response. Id. at 2. The Board granted the motion in-part, relying on a statement by B/E that is a common theme of many patent owners’ responses: “Petitioner’s obviousness assertions hang entirely on generalizations about a desire for space efficiency–desires that have purportedly existed for decades and yet never resulted in any product or reference that included all the ’838 patent’s claim elements.” Id. at 2-3. The Board ordered B/E to produce documents regarding development of a product1 (“KLM crew rest”) that Zodiac alleged directly contradicts B/E’s statement and was developed with the assistance of an engineer employed by B/E. Perhaps foreshadowing the destiny of at least one of the claims under review, the Board stated “Petitioner presents evidence–sufficient for purposes of its motion–that what it refers to as the ‘KLM crew rest’ included all elements of at least claim 9 of the involved U.S. Patent No. 8,590,838.” Id. at 3.
Decisions such as this one present a cautionary tale against parties use of broad statements characterizing the state of the art. In addition to the discovery issue, the decision serves as a reminder that although only patents and printed publications can serve as a basis for inter partes review, other types of prior art can be used in the proceeding, as, for example, evidence of obviousness.
1 According to the Petitioner, the product was not available as the basis for an invalidity ground in the IPR as it does not quality as “patents or printed publications.” IPR2014-00727, Paper 34 Petitioner’’s Motion to Compel Routine Discovery at 1 (April 3, 2015); see 35 U.S.C. § 311(b).