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The PTAB Clarifies Scope of Permissible Discovery in Inter Partes Review Proceedings: Part 1 of 2

In this two-part blog, the standards for seeking discovery are discussed in the context of a recent order in Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC, IPR2012-00001. In Garmin, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Lee, Tierney and Cocks) issued an order regarding the patent owner’s (Cuozzo) request for additional discovery. In its order, the Board clarified what constitutes routine discovery and what constitutes additional discovery, including its explanation of the showing that must be made under the “interests of justice” standard for obtaining additional discovery.

Regarding routine discovery, the Board noted that the Board’s authorization is not required for a party to conduct routine discovery. The Board explained that “[u]nder 37 C.F.R. § 41.51(b)(1)(i), ‘[u]nless previously served or otherwise by agreement of the parties, any exhibit cited in a paper or in testimony must be served with the citing paper or testimony.’ Under 37 C.F.R. § 41.51(b)(1)(iii), ‘[u]nless previously served, a party must serve relevant information that is inconsistent with a position advanced by the party during the proceeding concurrent with the filing of the documents or things that contains the inconsistency’ [privileged information excepted].” Applying these standards, the Board ruled that Garmin was not required to produce the file histories for the prior art patents cited in its petition because it did not rely on those file histories and there was nothing in Cuozzo’s motion that suggested Garmin failed to comply with the routine discovery requirement under 37 C.F.R. § 41.51(b)(1)(iii). However, the Board did require that the parties confirm that they had complied with the routine discovery obligations of 37 C.F.R. § 41.51(b)(1)(iii).

The Board then turned to the standards for seeking additional discovery. The Board began by setting forth the standard and factors that are considered important:

The statutory standard is “necessary in the interest of justice.” 35 U.S.C.
§ 316(a)(5). We have previously advised Cuozzo, in an order authorizing the filing of a motion for additional discovery, that the following factors are important (Paper 20, 2-3):

1. More Than A Possibility And Mere Allegation — The mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient to demonstrate that the requested discovery is necessary in the interest of justice. The party requesting discovery should already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered.

2. Litigation Positions And Underlying Basis — Asking for the other party’s litigation positions and the underlying basis for those positions is not necessary in the interest of justice. The Board has established rules for the presentation of arguments and evidence. There is a proper time and place for each party to make its presentation. A party may not attempt to alter the Board’s trial procedures under the pretext of discovery.

3. Ability To Generate Equivalent Information By Other Means – Information a party can reasonably figure out or assemble without a discovery request would not be in the interest of justice to have produced by the other party. In that connection, the Board would want to know the ability of the requesting party to generate the requested information without need of discovery.

4. Easily Understandable Instructions — The questions should be easily understandable. For example, ten pages of complex instructions for answering questions is prima facie unclear. Such instructions are counter-productive and tend to undermine the responder’s ability to answer efficiently, accurately, and confidently.

5. Requests Not Overly Burdensome To Answer — The requests must not be overly burdensome to answer, given the expedited nature of Inter Partes Review. The burden includes financial burden, burden on human resources, and burden on meeting the time schedule of Inter Partes Review. Requests should be sensible and responsibly tailored according to a genuine need.

Regarding Factor 1, the Board stated that “useful” does not mean “relevant” or “admissible.” Instead, it means “favorable in substantive value to a contention of the party moving for discovery.” Thus, the patent owner’s request for information about secondary considerations of nonobviousness, without a threshold showing that the information to be discovered will be useful to the patent owner, failed to show that the discovery is necessary in the “interests of justice.”

Specifically, in terms of information sought about the potential assertion of commercial success, the Board held that the patent owner did not make a sufficient showing of a nexus between the inventive features claimed and the units sold by Garmin. Without such a nexus, the units for which the sales and pricing information was sought may embody significant and desirable features not recited in the claims under review. For these reasons, the Board denied the patent owners interrogatories and document requests seeking the number of units sold, the sales price charged for the units with and without the speed limit warning/alert feature, agreements regarding the use, development, licensing, or ownership of IP directly related to the speed limit alert, ownership interests in the speed limit alert technology by non-Garmin entities, and when the speed alert/warning feature was commercially introduced in Garmin’s Personal Navigation Devices.

In terms of failure by others, the Board stated that it must be shown that the widespread efforts of skilled workers having knowledge of the prior art had failed to find a solution to the problem. Thus, “[a]ny failure by Garmin alone does not establish widespread failure by skilled workers in the art of attempting to solve the same problem.” And, if even there were others that tried, but failed to solve the problem, the patent owner must set forth a threshold showing that Garmin itself tried but failed to solve that problem. For these reasons, the Board denied the patent owner’s interrogatory seeking Garmin’s failed efforts to develop the speed alert/warning feature.

This decision highlights that discovery requests that would otherwise be considered routine in district court proceedings employing the liberal discovery rules set forth in the Federal Rules of Civil Procedure are not applicable to Inter Partes Review proceedings. In particular, parties seeking additional discovery must make a showing beyond speculation that in fact something useful will be uncovered by the discovery sought.

Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC, IPR2012-00001 (A.P.J.s Lee, Tierney and Cocks) (J. Lee), Paper 26 (March 5, 2013).

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. The authors represent inventors, patent owners and technology companies in patent licensing and litigation in U.S. District Courts and in the United States Patent and Trademark Office, including numerous IPRs currently pending before the PTAB. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or