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.