Fighting a war on two fronts is rarely an enviable strategic position. While district court judges do not always grant stays of patent infringement cases until resolution of co-pending inter partes reviews (IPR’s), accused infringers considering whether to request a stay of litigation should note the PTAB’s February 28, 2018, Order in Becton, Dickinson and Company v. B. Braun Melsungen AG, IPR2017-01586, -01587, -01588, -01589, and -01590The PTAB granted the patent owner’s motion to compel production of documents produced by the petitioner during co-pending infringement litigation. B. Braun Melsungen AG v. Becton, Dickinson and Co., Case No. 16-411 (D. Del.) (stipulated final judgment of non-infringement entered and currently on appeal to the Federal Circuit). During the litigation, Becton, Dickinson (“BD”), the IPR petitioner, produced various documents that, according to Braun, “demonstrate that there was a long-felt but unmet need for the claimed invention, Petitioner copied Patent Owner’s invention, and the invention has been commercially successful. In addition, the Documents contradict Petitioner’s stated position on the existence of secondary considerations of nonobviousness.” Patent Owner’s Motion to Compel, at 1.

IPR rules provide mandatory service of “routine discovery” including a requirement to “serve relevant information that is inconsistent with a position” advanced during the PTAB proceeding. The Board found that “[a]lthough, routine discovery under 37 CFR § 42.51(b)(1)(iii) is narrowly directed to specific information known to the responding party to be inconsistent with a position advanced by that party in the proceeding, Patent Owner has shown that the identified documents are inconsistent with a current position taken before the Board.” Order, at 4. The Board cited the Federal Circuit’s 2017 decision in Ultratec, Inc. v. CaptionCall LLC, previously discussed on this blog, vacating a PTAB final written decision and ordering the PTAB to admit and consider an expert’s trial testimony from a similar IPR, where “no reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”

Braun argued that BD was relying on testimony from the same expert in both the litigation and the IPRs, so the materials would be useful in cross-examining the expert as to the opinions offered in the IPR. Though already within its possession, because the materials were designated confidential under a protective order in the litigation, Braun could not introduce them in the IPR absent an order that the documents be produced in the IPR. [IPR2017-01586, Docket No. 66, at 2].

The Board rejected arguments that a stipulated entry of judgment of non-infringement in the litigation rendered the documents irrelevant to secondary considerations of non-obviousness, as the non-infringement stipulation was made in order to pursue an appeal of the underlying claim construction (which construction was at odds with the PTAB’s construction of the same claim language).

In a 2013 precedential order (discussed here), Garmin Int’l Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, the PTAB set out five factors determining whether additional discovery in an IPR is in the interests of justice, pertinent ones of which were discussed in Braun’s motion and BD’s response:

(1) More Than A Possibility and Mere Allegation: the party requesting discovery should already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered. In this case, Braun argued the materials contradict allegations regarding a lack of secondary considerations of non-obviousness, while BD countered that the inferences Braun attempts to draw from the documents are unsupported.

(2) Litigation Positions and Underlying Basis: discovery is not to be used as a pretext to alter the Board’s trial procedures to learn, through the normal presentation of arguments and evidence, another party’s litigation positions and underlying basis for those positions. The parties did not address this point in their briefs.

(3) Ability to Generate Equivalent Information by Other Means: the Board wants to consider the requesting party’s ability to generate the requested information without need of discovery. Braun argued that because the documents are BD’s own internal materials, Braun could not generate equivalent information by other means, and the protective order in the litigation prevented Braun from introducing the documents in the IPR’s, absent the PTAB granting the motion.

(4) Easily Understandable Instructions: discovery requests should be tailored in a manner that does not tend to undermine the responder’s ability  to answer efficiently, accurately, and  confidently. The parties did not address this point in their briefs.

(5) Requests Not Overly Burdensome to Answer: given the expedited nature of IPR’s, discovery requests should not impose undue financial burden, burden on human resources, or burden on opposing party’s ability to meet IPR time schedule; requests should also be “sensible and responsibly tailored according to a genuine need.” Braun characterized its request as “‘effectively, for permission to use’ documents already in” its possession and, therefore, its requests are not overly burdensome.

Accused infringers filing petitions for IPR during patent litigation should be aware that documents produced in the litigation might need to be produced in the PTAB proceedings as well. Requesting a stay early in the litigation may provide a tactical benefit of avoiding having to produce potentially detrimental evidence during an IPR.