[Patentpractice] Revision of Party in Interest in IPR

[Rick Neifeld]

Stan - Discovery in an IPR is governed by rule 42.51.  You have to jump
through the hoop of subsection (b)(2) "additional discovery" for anything
not "routine" as defined in subsection (b)(1).

You cannot do anything other than (b)(1) discovery without prior board
authorization, which normally requires a conference call in order to be
allowed to subsequently file a written motion.

As to belated identification of an RPI, unless that belated action
would result in lack of PTAB jurisdiction, don't hold your breadth for a
decision on your substantive motion.  *See* Sharkninja Operating LLC v.
Irobot Corporation, IPR2020-00734, paper 11 (PTAB 10/6/2020; designated
precedential 12/4/2020).

And no, you have no right to the equivalent of a 30(b)(6) deposition.

Rick







On Mon, Mar 24, 2025 at 10:05 AM Stanley H. Kremen via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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/
> >
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> > -----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-correcting-
> >
> disclosure-of-real-parties-in-interest-not-procedurally-fatal-to-ipr-petitio
> > 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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-- 
Best regards
Rick Neifeld, J.D., Ph.D.
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032
Mobile: 7034470727
Email: RichardNeifeld at gmail.com;
This is NOT a confidential and privileged communication.  If you are not
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