In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue.

The privity dispute centered on whether the petitioner was in privity with a non-party that had been served with a district court complaint more than one year before the first-wave IPR petitions were filed. In the first-wave proceedings, the patent owner argued pre-institution that the petitions were time-barred under 35 U.S.C. § 315(b) due to the earlier litigation. The board denied the patent owner’s request for discovery on that issu

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