Obtaining Discovery Regarding Real Parties-­in-­Interest at the PTAB

Jul 6, 2015

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The board found most of the patent owner’s requests to be unduly broad and encompassed information whose usefulness was only speculative. For example, one request would have required the petitioner to provide the name and address of every one of its investors, shareholders, trustees, officers, and directors. The board denied these requests because “it is insufficient for the patent owner to merely establish the possibility of finding something useful.” Nevertheless, the board allowed discovery of agreements that would allow another party to control any aspect of the inter partes review or to review papers filed in the proceeding. The board found that this narrow, highly­relevant inquiry sufficiently met the five factors set forth above.

Coalition for Affordable Drugs II LLC v. NPS Pharms., Inc., IPR 2015­00990, Paper No. 14 (PTAB July 2, 2015).

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