[Patentpractice] Revision of Party in Interest in IPR

[steve at hoffberglaw.com]

See https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=TrialPracticeGuideConsolidated, pp 22-36.

The Board generally interprets its Garmin factors to require that you have the evidence you need outside the proceeding (but subject to protective order), and want it in the proceeding through discovery.  Otherwise, the "possibility" that the information exists is often insufficient to get authorization for additional discovery (isn't that the point of discovery?).  Also, seeking the "mandatory discovery" under the inconsistent statements issue would often require similar briefing as the Garmin factors, and could fail on the "possibility" issue.  See Garmin factor 3 "Ability To Generate Equivalent Information By Other Means".

Very truly yours,

Steven M. Hoffberg
Hoffberg & Associates
29  Buckout Road
West Harrison, NY 10604
(914) 949-2300 tel
(845) 625-2547 fax
steve at hoffberglaw.com
https://www.linkedin.com/in/hoffberg/

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-----Original Message-----
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Stanley H. Kremen via Patentpractice
Sent: Monday, March 24, 2025 10:03 AM
To: patentpractice at oppedahl-lists.com
Cc: Stanley H. Kremen <shk at shk-dplc.com>
Subject: Re: [Patentpractice] Revision of Party in Interest in IPR

How is discovery in an.IPR limited? I plan on deposing their expert. Can I also do the equivalent of a 30(b)(6) deposition? What are my time frame limitations? Can I compel document production?

Thanks in advance. 

Stan Kremen

Sent from my iPhone

> On Mar 23, 2025, at 7:56 PM, steve--- via Patentpractice <patentpractice at oppedahl-lists.com> wrote:
> 
> If this is an actual issue in the case, a deposition may be in order.  
> The PTAB is stingy on discovery, so the request needs to be well thought out.
> However, since the discovery is limited, any actual smoking gun will 
> stand out, and may put Petitioner on the defensive.
> 
> Very truly yours,
> 
> Steven M. Hoffberg
> Hoffberg & Associates
> 29  Buckout Road
> West Harrison, NY 10604
> (914) 949-2300 tel
> (845) 625-2547 fax
> steve at hoffberglaw.com
> https://www.linkedin.com/in/hoffberg/
> 
> Emails and attachments received from us may be confidential and/or 
> protected by the attorney-client privilege, as attorney work-product 
> or based on other privileges or provisions of law. If you are not 
> designated as an intended recipient of this email, do not read, copy, 
> use, forward or disclose the email or any of its attachments to 
> others. Instead, immediately notify the sender by replying to this 
> email and then delete it from your system. We strictly prohibit any 
> unauthorized disclosure, copying, distribution or use of emails or attachments sent by us to other than the intended recipient.
> This communication does not create any legal obligations on behalf of 
> the sender, unless executed in a manner indicating an intent to be bound.
> 
> -----Original Message-----
> From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On 
> Behalf Of Randall Svihla via Patentpractice
> Sent: Sunday, March 23, 2025 1:52 PM
> To: For patent practitioners. This is not for laypersons to seek legal 
> advice. <patentpractice at oppedahl-lists.com>
> Cc: Randall Svihla <rsvihla at nsiplaw.com>
> Subject: Re: [Patentpractice] Revision of Party in Interest in IPR
> 
> Maybe this will help:
> 
> https://www.akingump.com/en/insights/blogs/ip-newsflash/delay-in-corre
> cting- 
> disclosure-of-real-parties-in-interest-not-procedurally-fatal-to-ipr-p
> etitio
> n
> 
> Best regards,
> 
> Randall S. Svihla
> NSIP Law
> Washington, D.C.
> 
> 
> -----Original Message-----
> From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On 
> Behalf Of Stanley H. Kremen via Patentpractice
> Sent: Sunday, March 23, 2025 1:45 PM
> To: patentpractice at oppedahl-lists.com
> Cc: Stanley H. Kremen <shk at shk-dplc.com>
> Subject: [Patentpractice] Revision of Party in Interest in IPR
> 
> Colleagues:
> 
> Currently, I am defending a patent in an IPR. A trial was instituted, 
> and I replied to the petition. The Petitioner recently changed the 
> identity of the real party in interest. Is this allowed?
> 
> Stanley (Stan) Kremen
> 
> Sent from my iPhone
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