Patent Counsel

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Patent Counsel

Recent PTAB Decisions on Motions for Additional Discovery


Recent PTAB Decisions on Motions for Additional Discovery

On a motion for additional discovery, various factors inform the Board’s determination of whether the discovery requested meets the standard of “necessary in the interest of justice” under 35 U.S.C. § 316(a)(5), including the factors set forth in Garmin Int’l., Inc. v. Patent of Cuozzo Speed Techs, LLC, Case IPR2012-00001 (PTAB Mar. 5, 2013) (Paper No. 26) slip. op. at 6-7: (1) the request is based on more than a mere possibility of finding something useful; (2) the request does not seek the litigation positions of the other party; (3) the information is not reasonably available through other means; (4) the request is easily understandable; and (5) the request is not overly burdensome to answer.

Recent decisions denying motions for additional discovery confirm the notion that “the Board will be conservative in granting leave for additional discovery.” Biomarin Pharmaceutical Inc. v. Genzyme Therapeutic Products Limited Partnership, IPR2013-00537, Paper 41 at 3 (June 10, 2014). The following discussion summarizes the salient points from such recent decisions.

  • BioMarin Pharmaceutical Inc. v. Genzyme Therapeutic Products Limited Partnership

    In BioMarin, Petitioner sought additional discovery from Patent Owner relating to the authentication of an exhibit -- a press release dated September 2, 1997 regarding Duke University and/or Duke University Medical Center (Duke) obtaining FDA designation for Pompe’s disease therapy (the Duke Press Release). See Biomarin, IPR2013-00537, Paper 41 at 4. Despite noting that it instituted trial relying on the Duke Press Release, the Board denied Petitioner’s request, determining that Petitioner failed to set forth sufficient evidence that the additional discovery sought would “result necessarily in finding something useful” — i.e., the first Garmin factor was not satisfied. See id. at 5. Specifically, the Board found that Petitioner’s assertions that it was “very possible” that copies of the Duke Press Release were saved in Patent Owner’s file, or that Duke “may have provided” Patent Owner with a copy of the Duke Press Release were too speculative to show a relationship between Patent Owner and Duke relating to the patents at issue, or even a relationship based on the subject matter of the patents at issue. See id. at 4, 5. Notably, however, the Board took the opportunity to remind the parties of their “ongoing, self-executing obligations of routine discovery, i.e., evidence and information that a party must provide to the other side,” see id. at 5 (citing BlackBerry Corp. et al. v. Wi-Lan USA Inc., Case IPR2013-00126 (PTAB Aug. 19, 2013) (Paper 15) (slip. op. at 2), and, therefore, to the extent Patent Owner had non-privileged information that was inconsistent with its position regarding the authenticity of the challenged exhibit, Patent Owner was obligated to produce such information to Petitioner, see id. at 6.
  • Schott Gemtron Corp. v. SSW Holding Co., Inc., IPR2014-00367, Paper 20 (August 13, 2014)

    In Schott, Patent Owner sought additional discovery pertaining to its assertion of commercial success and copying as secondary considerations of nonobviousness. The Board determined that Patent Owner failed to provide “a threshold amount of evidence” to show (1) sales allegedly amounting to commercial success, or (2) an alleged nexus between the claimed inventions and any commercial success of Petitioner’s products. With respect to sales as evidence of commercial success, the Board found that, although it proffered testimony relating to sales figures, Patent Owner failed to set forth “sufficient evidence [beyond mere speculation or a mere possibility] indicating that those sales would be considered significant in the relevant market.” See Paper 20 at 5. And, with respect to a nexus between the claimed invention and the commercial success of the product, the Board explained that Patent Owner was required to offer “proof that the sales [of the product] were a direct result of the unique characteristics of the claimed invention — as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” See id. at 6 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)) (internal quotation marks omitted). The Board found that, although Patent Owner offered evidence of Petitioner’s product meeting the limitations of the claimed invention, Patent Owner failed to provide “sufficient evidence of nexus between the claimed invention and Petitioner’s product with respect to Petitioner’s sales.” Id. (emphasis in original).

    Importantly, the Board also touched on the tension between offering sufficient evidence and being able to generate the requested information without discovery, noting that the evidence Patent Owner submitted in support of its motion undermined the notion that Patent Owner could not obtain the additional discovery it sought “by other means.” See id. at 7-8.

    A further lesson to be gleaned from the decision is that additional discovery requests that place the burden on the recipient of the request to (1) identify all employees that could have sent or received material related to the claimed invention or accused product, (2) copy the emails from the employees’ computers, (3) review the emails for responsiveness and privilege, and then (4) redact non-responsive and/or privileged portions of the emails before producing them will likely be viewed as “overly burdensome” and, therefore, weigh against permitting discovery. See id. at 8-9.
  • WaveMarket Inc. D/B/A Location Labs v. LocatioNet Systems Ltd., IPR2014-00199, Paper 34 (August 11, 2014)

    In WaveMarket, Patent Owner sought production of certain documents, an answer to one interrogatory, and seeks authorization to take a deposition to establish that certain entities which are not named real parties in interest are in fact so and that therefore the Petition should be dismissed under 35 U.S.C. § 312(a)(2). The Board denied Patent Owner’s motion, determining that Patent Owner failed to set forth sufficient evidence is not sufficient on the issue of real party-in-interest because Patent Owner errantly focused on privity when “privity is more expansive than real party-in-interest.” See Paper 34 5. The Board held that evidence of shared counsel or the admitted existence of indemnification obligations and joint defense/common interest agreements did not demonstrate “beyond speculation” that something useful would be uncovered. See id. at 6 (emphasis in original).

    Despite expressly taking no position on the argument, the Board interestingly pointed to ongoing proceedings in the related district court litigations as bearing on the question of whether Patent Owner had the ability to generate equivalent information by other means — the third Garmin factor. See id. at 9.


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