Additional Discovery Denied for Failure to Meet Garmin Factors

Seoul Semiconductor Co., Ltd v. Enplas Corporation, IPR2014-00605, Paper 17, (November 5, 2014), the Board  denied patent owners motion for additional discovery which exceeded the scope of the Board’s authorization.  The Board further warned the parties that  future violation of our prohibition against unauthorized motions shall be subject to sanctions.

As to the discovery that the Board did authorize, the Board found patent owner’s application of the Garmin Factors deficient.  The Board found that the Patent Owner failed to meet the first factor by filing tow show beyond speculation that something useful will be discovered.  The Board further found that patent owner was asking for information that it could reasonable figure or assemble on its own in violation of the third factor.  Lastly the Board found that the requests were not sensibly and responsibly tailored to a genuine need as required by the fifth Garmin factor.


Lightning Strikes and Patent Owner Gets Additional Discovery

In Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, IPR2014-00717, Paper 17, IPR2014-00735, Paper 17 (October 2, 2014), the patent owner presented sufficient information to call into question whether Google was also a real party in interest, that the Board granted the patent owner limited additional discovery on the question of real party in interest.

No Right to Cross-Examine a Declarant Not Under the Proponent’s Control

In Mexichem Amanco Holding S.A. de C.V. v.Honeywell International, Inc., IPR2013-00576, Paper 36 (September 5, 2014), the Board denied patent owner’s request for additional discovery — the deposition of Dr. Takashi Shibanuma, who provided previously prepared testimony relied on by Petitioner in its Reply to Patent Owner’s Response.  This previously prepared testimony was a declaration originally submitted in reexaminations of a different, but related, patent.  The Board denied the additional discovery relying on the Fifth Garmin Factor — that the request is not overly burdensome to answer.  The Board said that it wold not compel petitioner to provide Dr. Shibanuma for cross-examination in a deposition, noting that the witness was not under Petitioner’s control, and may reside in Japan, and that such such action may require a court subpoena and/or invoke the Hague Convention.


Cross-Examination is Not Limited to Documents Cited in Declaration

In Medtronic, Inc. v. Endotach LLC, IPR2014-00100, Paper 32 (August 28, 2014), the petioner filed a Supplemental Notice of Deposition of patent owner’s witness, indicating that its cross-examination of the witness “may rely on,” among other things, a prior declaration by the witness filed in district court and three U.S. patents.  The patent owner requested a conference with the Board because such cross- examination necessarily would be outside the scope of the direct testimony set forth in his IPR Declaration.

The Board disagreed with the Patent Owner, noting:

We contemplate multiple scenarios in which other documents may be used for cross-examining a witness, while staying within the scope of his or her direct testimony. The fact that a document is not cited or discussed in a declaration is not dispositive for purposes of enforcing § 42.53(d)(5)(ii).

Discovery Remains Hard To Get

In Electronic Frontier Foundation v. James D. Logan, IPR2014-00070, Paper 32 (July 29, 2014), the Board denied pettioner’s motion to compel discovery relating to the on-going litigation involving the patent, to uncover inconsistent positions of the patent owner.  The Board said it required more than speculation that an inconsistency exists to require production under 37 C.F.R. § 42.51(b)(1)(iii).  The Board instructed the parties to confer about the requests, and authorized the petitioner to contact the Board if an agreement cannot be reached,


Additional Discovery is Still Hard to Come By

GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00051, paper 17 (April 3, 2014, the Board authorized Patent Owner to file a motion for additional discovery, directed solely to the real parties in interest in the instant proceedings, no later than April 7, 2014.  The Board cautioned the patent owner that a motion for additional discovery is unlikely to be granted if it is unduly broad and is written in the style of a district court litigation request for “all documents in the possession, custody, or control of GEA that discuss, refer to or relate to . . . .” Such a request is unlikely to be found sufficiently narrowly tailored under the factors considered in deciding whether discovery is “necessary in the interest of justice.”  The Board directed the patent owner to Garmin Int’l, Inc. et. al. v. Cuozzo Speed Techs. LLS, IPR2012-00001; (“Decision on Motion for Additional Discovery”) (Paper 26); Apple Publishing v.Achates Reference , Inc., IPR2013-00080 (Paper 18); Broadcom Corp. v. Telefonaktiebolaget LM Ericsson, IPR2013-00601 (Paper 23); Nichia Corp. v. Emcore Corp. , IPR2012-00005 (Paper 19).

The Board said that the motion should address what evidence shows that petitioner and the identified entities have discoverable evidence that is relevant to determining whether any of those entities are real parties in interest of Petitioner who have been served with a complaint for patent infringement such that a section 315(b) bar would apply.

Trust, But Verify

In Ikaria, Inc. v. GENO LLC, IPR2013-00253, Paper 20, (April 1, 2014) in lieu of granting petioner additional discovery based upon allegations that the patent owner had not undertaken a reasonable search for information inconsistent with a positon advanced by it, the Board ordered patent owner’s counsel to file a signed certification that:

Upon reasonable search and inquiry, any relevant, nonprivileged information that is inconsistent with a position advanced by Patent Owner during this proceeding, has been produced or does not exist.

Obtaining Additional Discovery in an Inter Partes Review Remains Difficult

The provision for “additional discovery” in inter partes review proceedings has consistently fallen victim to the PTAB’s steadfast resolve to ensure just, speedy, and inexpensive inter partes review proceedings.  With one notable exception, each request for additional discovery has been denied by the Board, typically with a holding that the movant has failed to meet the requirement that such discovery is “necessary in the interest of justice.”  37 CFR § 42.51(b)(2). Below, we summarize the most recent decisions relating to Motions for Additional Discovery and the key guidance from the Board that can be learned from each such decision.

Motions Denied

Smith & Nephew, Inc. v. Convatec Tech., Inc., IPR2013-00097, Paper 27 (August 21, 2013).  ConvaTec sought discovery into certain submissions made by Smith & Nephew to the FDA that related to a commercial product ConvaTec alleged was covered by its patent-at-issue.  Briefly, ConvaTec alleged that, during a UK proceeding, Smith & Nephew made confidential statements that suggested that it had failed to make the product by its own method and was forced to use methods claimed in ConvaTec’s patent.  This evidence would, per ConvaTec, be relevant secondary considerations of non-obviousness relating to copying and failure of others.  The Board denied the request, finding that ConvaTec failed to provide sufficient explanation and evidence that something useful would be uncovered if discovery were granted.  More specifically, the Board found that, even if the FDA had found that Smith & Nephew’s product was “substantially equivalent,” such a statement would be insufficient evidence of copying.  Order at 5.  Further, the “failure of others” argument was not deemed sufficient to allow discovery because, to establish that factor, there must be evidence of widespread efforts of skilled workers, having knowledge of the prior art, that failed to find a solution to the problem.  This single incident of failure, if proven, would not demonstrate such widespread efforts and failure.  Order at 7.

Blackberry Corp. v. Wi-Lan USA Inc., IPR2013-00126, Paper 15 (August 19, 2013).  Wi-Lan served a “First Request for Production of Documents and Things,” and Blackberry requested a conference call with the Board for guidance on whether it needed to respond to the requests.  In short, the Board said Blackberry need not respond to the requests.  The requests were based on the Routine Discovery provisions of the Patent Office regulations, but with some broadening caveats.  For example, Wi-Lan sought documents “relating to information inconsistent with…,” instead of “information inconsistent with…” as required by the Rules.  Even had the requests identically mirrored the Rules, however, the Board would still have ruled that they need not be responded to.  In short, Routine Discovery is self-executing and self-enforcing and, thus, there is no need for the service of discovery requests to get that information.  Order at 2.

St. Jude Medical, Cardiology Division, Inc. v. Board of Regents of the University of Michigan, IPR2013-00041, Paper 20 (July 31, 2013).  The University of Michigan sought documents St. Jude exchanged with the FDA in obtaining approval to market products covered by the patent-at-issue.  This information was sought for the purpose of seeing if it contained secondary considerations evidence, among other reasons.  St. Jude opposed given the magnitude of the burden on St. Jude to review and produce the documents.  Because Michigan only identified a “possibility” of finding useful information, the request for additional discovery was deemed insufficient by the Board.  Order at 3. University of Michigan was also deemed not to have acted timely in making the request (it having been made only shortly before the Patent Owner Response was due).

Illumina, Inc. v. The Trustees of Columbia University in the City of New York, IPR2012-00006, Paper 42 (May 7, 2013).   Columbia University sought to file a motion for additional discovery to use evidence obtained from Illumina in co-pending litigation.  The Board held that permission to use such evidence was unnecessary – simply, Columbia did not need to take any discovery at all, such discovery had already occurred.  The request for authorization to file the motion was denied, therefore, as moot.

Synopsis, Inc. v. Mentor Graphics Corp., IPR2012-00042, Paper 24 (April 25, 2013).  Mentor Graphics sought discovery relating to the issue of assignor estoppel.  Briefly, Mentor Graphics believed that additional discovery may have led to evidence proving that the petitioner was in privity with an assignor of the patent-at-issue.  For purposes of this motion, the Board assumed it could hear the issue of assignor estoppel, but ultimately denied the motion, in any event, because Mentor Graphics had not proven that the discovery was necessary in the interest of justice.  More specifically, Mentor Graphics: (1) failed to provide an explanation with evidence sufficient to show that something useful will be uncovered by the discovery: (2) failed to provide what efforts it had made to acquire, on its own, the discovery it now seeks; and (3) proffered discovery requests that were burdensome in terms of finances, human resources, and meeting the IPR time schedule.

Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-00106, Paper 31 (August 27, 2013).  In an analogous case to the Mentor Graphics decision discussed above, Star Envirotech’s Motion for Additional Discovery, seeking information that would prove the applicability of an assignor estoppel defense, was denied because this three judge panel decided that assignor estoppel cannot be successfully raised as a defense in an inter partes review.  Thus, because assignor estoppel was not deemed to be a valid defense in inter partes review proceedings, Star Envirotech could not meet its burden to show that the requested discovery was necessary in the interest of justice.

The Exception

Corning Inc. v. DSM IP Assets B.V., IPR 2013-00043, Paper 27 (June 21, 2013).  Proving that it was not simply hitting the “NO Button” with regard to each Motion for Additional Discovery, the Board partially granted DSM’s request for Additional Discovery, allowing DSM discovery into laboratory notebooks and related documents that contained protocols and testing that underlie test results submitted by Corning’s expert.  In this IPR proceeding, Corning took the position that the subject matter in the challenged claims was unpatentable over the prior art based on inherent properties not explicitly recited in the prior art.  As such, Corning’s experts recreated the prior art compositions and tested them to prove that the properties from the DSM patent claims were inherent in those compositions.  DSM obtained the Board’s permission to discover the lab notebooks of Corning’s experts, but not actual samples of the compositions prepared by Corning, nor any testing results that were inconsistent with Corning’s testing (the latter discovery being deemed required already by “Routine Discovery”).