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).
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