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.


This entry was posted in Inter Partes Review and tagged , by Bryan Wheelock. Bookmark the permalink.

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.