By Jesse Wynn, Robert Breetz, Matt Johnson

In Samsung Electronics Co., Ltd. v. Netlist, Inc., the PTAB determined that a time-barred third party was not a real party in interest (“RPI”) and granted institution. IPR2022-00615, Paper 20 (Oct. 19, 2022) at 19 (“Institution Decision”). After institution, the patent owner moved for additional discovery pursuant to 37 C.F.R. § 42.51(b)(2) as to whether the third party was an RPI. IPR2022-00615, Paper 40 (Feb. 3, 2023) at 2 (“Director Decision”). Director Vidal then initiated a sua sponte review of the Board’s institution decision and granted-in-part the patent owner’s motion for additional discovery. Director Decision at 2–3. This IPR involves U.S. Patent No. 7,619,912 directed to memory modules in computer systems that patent owner asserted in multiple district court proceedings.

Director Vidal ordered additional discovery to assist the PTAB in determining whether the petitioner improperly omitted the third party and remanded to the PTAB to determine whether the petitioner failed to meet “its burden to establish that the Petition is not time-barred under 35 U.S.C. § 315(b).” Director Decision at 2.

Director Vidal instructed the PTAB to apply the RPI factors from Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018), which calls for analysis of the extent of the third-party’s interest, whether the third party would benefit from the petitioner’s actions, and whether the petitioner was representing the third-party’s interests based on its relationship to the third party. Director Decision at 3. Director Vidal also ordered the PTAB to consider whether the parties were in privity, assuming that the third party was not a “real party-in-interest.” Id.

PTO regulations provide that party seeking additional discovery “must show that such additional discovery is in the interests of justice.” Director Decision at 3 (citing 37 C.F.R. § 42.51(b)(2); 35 U.S.C. § 316(a)(5)). To determine whether the discovery is in the interests of justice, the PTO applies the Garmin factors, which include “(1) more than a possibility and mere allegation that something useful will be discovered; (2) requests that do not seek the other party’s litigation positions and the underlying basis for those positions; (3) the requesting party’s ability to generate equivalent information by other means; (4) easily understandable instructions; and (5) requests that are not overly burdensome to answer.” Director Decision at 4 (citing Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26, 6–7 (PTAB, Mar. 5, 2013)).

Director Vidal concluded that patent owner’s motion for additional discovery was timely because “the rules allow for additional discovery after institution,” particularly for “non-frivolous challenges to the asserted RPI.” Director Decision at 5.

Director Vidal granted patent owner’s request for deposition testimony from a prior litigation between the parties, the request for agreements between the petitioner and the third party relating to infringing products, and requests for indemnification agreements or communications between petitioner and the third party involving the ’912 patent or this IPR. Director Decision at 6–10. But she denied patent owner’s request to the extent that it sought discovery of “the terms of any supplier agreements” because that request was speculative, unclear, and overly broad. Director Decision at 8–9.


The Patent Office may grant requests for discovery to analyze whether a third party is an RPI if it determines that discovery is in the interests of justice and meet the requirements of the Garmin factors.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.