Garmin Factors Continue to Keep Additional Discovery Out of Reach

In Intri-Plex Technologies, Inc. v. Saint-Gobain Performance Plastics Rencol, Limited, IPR2013-00309, Paper (September 4, 2014), petitioner sought (1) detailed sales records of the products covered and not-covered by the patent, (2) records of conception of the invention, (3) testimony and records relating to the identification of prior art.  The Board applied the Garmin Factors.  As to sales information, the Board found petitoner failed under the First Garmin Factor – demonstrating more that a possibility the inventof would be useful and the Fifth Garmin Factor — that resposne was not budensome.  As to conception, the Board denied the additional discovery under the Third Garmin Factor, the ability to generate the information by other means (i.e., already scheduled depositions), and the Fifth Garmin Factor, undue burden.  As to the identification of prior art, the Board denied discovery under the First Garmin Factor — a failure to show the discovery will lead to useful information.


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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.