Mere Existence of JDG Found to be Enough

It can be an uphill battle to secure additional discovery at the Patent Trial & Appeal Board (PTAB) given the “interests of justice” standard of IPR proceedings. For this reason, Patent Owners seeking discovery on petitioner relationships — to discover unnamed parties in RPI/privity disputes — are frequently turned away absent “smoking gun” evidence of such a relationship.

However, a recent decision of the Board appears to take a far more liberal view of multi-defendant relationships where a Joint Defense Group (JDG) is known to exist.

In Adobe Inc. v., RAH Color Technologies LLC (here), Patent Owner sought discovery of the underlying agreement between members of a JDG, arguing that members of the JDG may be coordinating invalidity strategy/defense with the named petitioner. The Patent Owner pointed to privilege log entries that indicated communication between the parties prior to filing the IPRs, and that the petitioner appeared to take a “leadership position” in the group.

Petitioner, on the other hand noted that the communication between parties was due to a requirement to present a joint status report to the court, that communication was a few days before the IPR filing, and the claims challenged did not include many claims only asserted against other defendants.

In granting the discovery, the Board, walked through the Garmin Factors, explaining:

[W]e note that the real party-in-interest inquiry is heavily fact-dependent and the outcome may depend on the contents of the joint defense agreement (if one exists) that outlines the relationship between the Petitioner and a non-party. Petitioner has indicated that some sort of agreement exists between Adobe and the MDL Counterparties. See Ex. 2010. Thus, Patent Owner has supplied the required threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be uncovered.

(emphasis added)

While a non-precedential motion decision, this more liberal view of the importance of JDG agreements is quite noteworthy. Going forward, petitioners may choose to sit on the sidelines of such groups until the petition is filed with the PTAB to avoid unnecessary disputes.

Scott A. McKeown is an author of the Patents Post Grant