Permobil, Inc. v. Pride Mobility Products Corporation,  IPR2013-00407, Paper 43 (July 2, 2014), the Board denied the patent owner’s motion to compel production evidence of copying of the products embodying patent owner’s claims under review.  The patent owner first argued that this was routine discovery under 37 C.F.R. § 42.51(b)(1)(iii)., because it was inconsistent with the position taken by petitioner.  The Board, however, did not find the requested discovery to be sufficient inconsistent with the petitioner’s testimony.

The patent owner also argued that the discovery should be permitted as additional discovery in the interest of justice. pursuant to 37 C.F.R. § 42.51(b)(2)(i).  The Board has said that “one requesting additional discovery should already be in possession of a threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be discovered.” noted that in Garmin v. Cuozzo, IPR2012-00001, (PTAB Mar. 5, 2013).  The Board was not persuaded that patent owner had established beyond speculation that any useful information will be discovered.

Another recurring concern by the Board was that the patent owner’s request of evidecne realting to devices embodying patent owner’s claims under review” inherently requires s determination of infringemetn, an issue that is not before the Board in an inter partes review.