Although the rules of PTO post-grant proceedings provide for “additional discover”, it is limited to discovery needed “in the interests of justice” which the Board is setting at a very high threshold. This memo is a summary of each discovery motion decided by the Board and the reasoning given by the Board for the decision.
DSM Granted Additional Discovery Concerning Expert’s Lab Notebooks, But Denied “Samples” and Discovery on Inconsistent Positions – Order dated June 21, 2013; IPR2013-00052 (Paper 27)
Corning Incorporated (Petitioner) v. DSM IP Assets B.V. (Patent Owner) – Case IPR2013-00052 (U.S. Patent No. 7,276,543)
Corning’s Petition relied on the testimony of an expert who prepared several compositions disclosed in the prior art. Corning used this testimony to argue that certain properties in the prior art compositions are inherent. DSM’s motion sought additional discovery concerning the compositions synthesized by the expert, including: (1) laboratory notebooks; (2) samples of the compositions; and (3) testing results inconsistent with Corning’s positions. The Board addressed each category separately.
Laboratory notebooks (Granted). The Board first rejected DSM’s argument that the notebooks should have been produced as “routine discovery” under 37 C.F.R. § 42.51(b)(1)(i). In doing so, the Board disagreed with DSM’s argument that any reference to experiments requires the production of all underlying data and notebooks.
The Board analyzed the Garmin factors to determine whether DSM’s request met the requirements for additional discovery. In finding that the request met the “interests of justice” standard, the Board held that Factor #1 weighed in favor of DSM in that the details of the procedures used to synthesize the compositions are “per se useful as Corning has proffered the expert testimony . . . to demonstrate the unpatentability of DSM’s claims.” Order at 4. The Board then pointed out that Corning did not appear to challenge Garmin Factors 2 through 5.
Samples (Denied). Again, the Board ruled that the samples do not fall under the category of “routine discovery” and proceeded to apply the Garmin factors to the request. In denying DSM’s request, the Board found that DSM had failed to specify which samples it would have difficulty creating and the quantity required of each sample. Without knowing the quantity needed, the Board noted that DSM could not demonstrate that the request would not unduly burden Corning. Finally, the Board questioned why cross-examination of the expert and inspection of the laboratory notebooks would not be sufficient to address DSM’s concerns.
Inconsistent Positions (Denied). In deny this request, the Board pointed out that the “routine discovery” requirements under 37 C.F.R. § 42.51(b)(1)(iii) require a party to produce “information known to the responding party to be inconsistent with a position” presented in a Petition. Because Corning had confirmed that it had produced all information required under routine discovery, the Board found that any information covered by this request would have already produced.
SEL’s Motion Denied as Board Finds it Merely Presents Previously Considered (and Unconvincing) Evidence and Arguments – Order dated May 21, 2013; IPR2013-00028 (Paper 25)
Innolux Corporation (Petitioner) v. Semiconductor Energy Laboratory Co., Ltd. (SEL) (Patent Owner) – Case IPR2013-00028 & 00038 (U.S. Patent Nos. 6,404,480 & 7,956,978)
SEL’s motion sought additional discovery as to whether Innolux identified all of the real parties-in-interest when filing its petition. The Board noted that SEL’s motion relies on the same arguments and evidence it had previously presented to argue that Innolux is not the sole real party-in-interest representing the petitioner. The Board had already found such arguments unpersuasive and ruled accordingly in the context of its Decision on Institution of Inter Partes Review (Paper 9) and Decision on Request for Rehearing (Paper 20).
In ruling that SEL’s discovery requests did not meet the “interest of justice” threshold, the Board focused on the fact that SEL had provided no explanation as to how the same unconvincing evidence and reasoning could demonstrate that something “useful” would be uncovered to support its real party-in-interest theory, as required by Factor 1. Moreover, the Board stated that even if it found the other four factors (Factors 2-5) in SEL’s favor, SEL still would not have met its burden of showing the discovery is necessary in the interests of justice.
Columbia’s Motion Dismissed as Moot Because Columbia Already Possesses the Requested Evidence – Order dated May 7, 2013; IPR2013-00011 (Paper 43)
Illumina, Inc. (Petitioner) v. The Trustees of Columbia University in the City of New York (Patent Owner) – Case IPR2013-00011 (U.S. Patent No. 8,088,575)
Columbia’s motion concerned a request for additional discovery of evidence that allegedly relates to secondary considerations of non-obviousness. The evidence in question includes the deposition transcripts (and related exhibits) of two Illumina witnesses who testified in a related litigation. Columbia’s motion did not actually contain a request to take any discovery of evidence because the deposition and exhibits were already in Columbia’s possession. Rather, Columbia requested the Board’s permission to rely on information within the deposition and exhibits during the IPR proceedings given that a stipulated protective order was expected to be entered by the District Court in due course.
The Board dismissed the motion as moot and found that the permission requested by Columbia is unnecessary as there has been no protective order entered that governs the IPR proceeding. Further, the Board expressly refused to make a determination as to whether: (1) the use of the evidence would violate any stipulated protective order entered in the District Court, or (2) the evidence would otherwise be admissible in the IPR proceeding.
Achates’s Motion Denied for Failure to Show More Than a “Mere Possibility … That Something Useful Will Be Found” – Order dated April 2, 2013; IPR2013-00080 (Paper 17)
Apple Inc. (Petitioner) v. Achates Reference Publishing, Inc. (Patent Owner) – Case IPR2013-00080 & 00081 (U.S. Patent Nos. 6,173,403 & 5,982,889)
Achates filed a motion for additional discovery seeking copies of all agreements between Apple and any of the other defendants in the related Texas litigation, including agreements having indemnification provisions and any joint defense agreements between the parties. Achates’ motion contended that this information is relevant to the determination of whether Apple’s co-defendants in the related litigation are real parties-in-interest or privies of Apple. Because Apple’s co-defendants were served with a complaint more than one year before Apple filed its petitions for inter partes review (IPR), if any of the co-defendants are found to be real parties-in-interest or privies of Apple, the IPR petitions filed by Apple could not be instituted under the one-year bar found in 35 U.S.C. § 315(b).
In denying Achates’ motion and finding that the requested additional discover was not in the interests of justice, the Board focused its analysis on whether there exists “more than a ‘mere possibility’ or ‘mere allegation that something useful [to the proceeding] will be found.'” Order at 4 (citing Order – Authorizing Motion for Additional Discovery, IPR2012-00001, Paper 20 at 2-3). The Board noted that the determination of whether a non-party is a real party-in-interest or privy is highly fact-dependent, and factors such as whether the non-party “exercised or could have exercised control over a party’s participation” or whether the non-party is “responsible for funding and directing the proceeding” should be considered. Order at 4-5. The Board also looked to the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008) as providing guidance on the types of legal relationships between parties that may result in a non-party being bound by a judgment in a suit.1
The Board ultimately found the evidence set forth by Achates in its motion—a software development kit (SDK) that Achates contends Apple enters into with application developers such as those that are co-defendants in the related litigation—to be insufficient to meet the “more than a mere possibility” factor (Factor 1). The Board pointed to the fact that Achates provided no proof that any of Apple’s co-defendants actually signed the SDK agreement, and stated that even if Achates had such proof, the indemnification provision in the SDK agreement was not the type that would result in the co-defendants being real parties-in-interest or privies of Apple because the SDK does not grant a developer a right to intervene or control Apple’s defense to patent infringement allegations. Additionally, the Board found that because the accusations against Apple in the related litigation are based not solely on the developer’s actions but also on Apple’s own actions, Apple has distinct interests from the developers and could assert independent defenses. The Board held that these circumstances also support a finding that the relationship of the co-defendants to Apple does not rise to real party-in-interest or privy.
Finally, although not a factor typically cited in decisions on motions for additional discovery, the PTAB concluded the order by noting that Achates’s 3-month delay in requesting the discovery also weighed against granting the motion.
In Denying Cuozzo’s Motion, Board Establishes Factors for Showing Requested Discovery is in the “Interests of Justice” – Order dated March 5, 2013: IPR2012-00001 (Paper 26)
Garmin International, Inc. et al. (Petitioner) v. Cuozzo Speed Technologies LLC (Patent Owner) – Case IPR2012-00001 (U.S. Patent No. 6,778,074)
In its motion, Cuozzo requested discovery in the form of several interrogatories, document requests, and the equivalent of a Fed. R. Civ. P. 30(b)(6) deposition of a corporate entity on topics covered by the interrogatories and document requests. The Board first addressed Cuozzo’s claim that all of the discovery requests could be categorized as “Routine Discovery” under either 37 C.F.R. § 41.51(b)(1)(i) (requiring a party to produce all cited exhibits with the “citing paper or testimony”) or 37 C.F.R. § 41.51(b)(1)(iii) (covering all discovery “tailored to target information inconsistent with positions Garmin has taken in its Petition”). The Board rejected Cuozzo’s argument that 37 C.F.R. § 41.51(b)(1)(i) required Garmin to produce the file histories of all prior art patents relied on in its petition. The Board found that this interpretation was unreasonably broad because Garmin did not cite to or rely on the file histories, and Cuozzo could easily obtain them by other means if it so desires. The Board also rejected Cuozzo’s 37 C.F.R. § 41.51(b)(1)(iii) position, finding that Cuozzo has “cast a wide net directed to broad classes of information which may not include anything inconsistent with positions taken by Garmin.” Order at 4.
The Board next took up Cuozzo’s argument that the additional discovery is “necessary in the interest of justice” as required under 35 U.S.C. § 316(a)(5). The Board laid out five factors important in making a “interest of justice” determination:
More Than A Possibility And Mere Allegation – The mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient to demonstrate that the requested discovery is necessary in the interest of justice;
Litigation Positions And Underlying Basis – Asking for the other party’s litigation positions and the underlying basis for those positions is not necessary in the interest of justice;
Ability To Generate Equivalent Information By Other Means – Information a party can reasonably figure out or assemble without a discovery request would not be in the interest of justice to have produced by the other party;
Easily Understandable Instructions – The questions should be easily understandable; and
Requests Not Overly Burdensome To Answer – The requests must not be overly burdensome to answer, given the expedited nature of Inter Partes Review.
In finding that Cuozzo’s discovery demands did not meet the “interests of justice standard,” the Board ruled that Cuozzo’s misunderstanding of Factor 1 “critically undermin[es]” its entire motion. Cuozzo reworded Factor 1 in its motion as “Likely to Yield Relevant, Admissible Evidence.” The Board explained that “useful” as used in Factor 1 does not mean merely “relevant” and/or “admissible,” but rather means “favorable in substantive value to a contention of the party moving for discovery.” Order at 7. The Board found that Cuozzo’s motion does not include the threshold amount of evidence to show beyond speculation that “useful” information will be discovered.
The Board then moved through an analysis of the other factors in relatively short order. The Board indicated that Factor 2 weighs against Cuozzo’s motion as the requested discovery includes Garmin’s litigation positions. The Board pointed out that asking for these positions and their underlying bases is not necessary in the interests of justice, and that there are already rules in place that guide the proper time and place for Gamin to make a presentation of these arguments and evidence. With respect to Factor 3, the Board also found that Cuozzo’s requests failed to comply with this factor, specifically discussing that the evidence required for an assertion of long-felt but unresolved need as a secondary consideration of nonobviousness can be established by Cuozzo’s own analysis of the state of the art. The Board conceded that Cuozzo’s requests comply with Factor 4 as they are easily understandable. Finally, in analyzing compliance with Factor 5, the Board agreed with Garmin that the requests would require a significant expenditure of human and financial resources. The Board also pointed to a request for “Documents and Things You considered in preparing Your response to patent owner’s Interrogatories” as being unreasonably broad on its face and found that there is no valid reason for including such an “all-encompassing” demand.
1 These relationships include: (1) preceding and succeeding owners of property, (2) bailee and bailor, and (3) assignee and assignor.
