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Additional Discovery May Be Available For Requesting Documents On A Real Party-in-Interest
August 10, 2016

The Patent Trial and Appeal Board authorized the patent owner to file a motion for additional discovery in Inter Partes Review petition brought by the petitioner, Dr. Reddy’s Laboratories, Ltd. (“Dr. Reddy”).  (Case IPR2016-01113)

The patent owner, Invidior UK Limited (“Invidior”) sought the Board’s authorization to file a motion for additional discovery because Invidior had reason to believe that Teva Pharmaceuticals (“Teva”) may be a real party-in-interest and is in privity with Dr. Reddy.   The patent owner relied on the recent press announcement of an agreement between Dr. Reddy and Teva and a related notice by the Federal Trade Commission (“FTC”) and argued that the agreement allegedly would cover the drug at issue in the underlying patent infringement litigation between the parties.  Accordingly, Invidior sought authorization to serve requests for production relating to that agreement.  

Dr. Reddy asserted that the agreement had not been finalized during the relevant time period with respect to establishing privity and raised confidentiality concern about the production of the agreement and related documents.

The Board authorized Invidior to file a motion for additional discovery, which was to be limited to the requests for production of documents asserted by Invidior during the conference call.   The Board also requested the parties to consider the five “Garmin” factors which are relevant to a determination of whether the additional discovery is necessary in the interest of justice.  Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 5-7 (PTAB Mar. 5, 2013)(Paper 26)(precedential). 

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