PTAB Holds a Firm Line on Additional Discovery

Article co-written by Yuri Levin-Schwartz, Ph.D., a law clerk at MBHB.

When Congress created the Inter Partes Review (“IPR”) and Covered Business Method (“CBM”) review procedures for challenging the validity of an issued patent, it was intended for these processes to be quicker and more cost-effective than challenging patent validity in the district court system.[1] One of the mechanisms Congress utilized for achieving these objectives was limiting the types of discovery allowed as part of the IPR and CBM processes. This was a lofty goal and pundits questioned whether this restricted scope of discovery could be maintained in practice. With the passage of two years under the IPR and CBM systems, a noticeable trend has emerged regarding how the Patent Trial and Appeal Board (“the Board”) is accomplishing these Congressional objectives through its decisions on motions for additional discovery. Unfailingly, the Board acts as a strict gatekeeper when evaluating these discovery requests and, within these proceedings, denies parties’ attempts to exploit wide-reaching discovery practices that are allowed under the Federal Rules of Civil Procedure.

The “routine discovery” allowed in IPR and CBM proceedings is narrowly directed to production of “any exhibit cited in a paper or testimony” and “relevant information that is inconsistent with a position advanced during the proceeding.”[2] A party is required to serve this routine discovery concurrently with the filing of documents or things.[3] Any request that falls outside of the scope of this routine discovery is considered “additional discovery” and “must be in the form of a motion, although the parties may agree to discovery amongst themselves.”[4] For IPRs, the moving party must show that the additional discovery is in the “interests of justice.”[5] For CBMs, the moving party only needs to show “good cause” for the additional discovery.[6]

In its first IPR additional discovery decision, the Board clearly defined the factors—referred to as the Garmin Factors—necessary for the movant to meet the “interests of justice” standard. The Garmin Factors are:

  1. More than a possibility and mere allegation;
  2. Litigation positions and underlying basis;
  3. Ability to generate equivalent information by other means;
  4. Easily understandable instructions; and
  5. Requests not overly burdensome to answer.[7]

The first Garmin factor requires the moving party to possess “evidence tending to show beyond speculation that in fact something useful will be uncovered.”[8] “In the context of Factor (1), ‘useful’ means favorable in substantive value to a contention of the party moving for discovery.”[9] The Board denies many additional discovery motions because the moving party fails to identify pre-existing evidence showing that the additional discovery will be useful.

The next two Garmin factors classify discovery that will never meet the interests of justice standard. The second Garmin factor, “litigation positions and underlying basis,” prohibits “[a]sking for the other party’s litigation positions and the underlying basis for those positions.”[10] Thus, the common litigation practice of contention interrogatories is restricted in the IPR process. The third Garmin factor, “ability to generate equivalent information by other means,” prohibits asking for “[i]nformation a party can reasonably figure out or assemble without a discovery request.”[11]

The last two Garmin factors curb common “scorched Earth” litigation discovery practices. The fourth Garmin factor, “easily understandable instructions,” puts an end to complex instructions, while the fifth Garmin factor, “requests not overly burdensome to answer,” puts an end to overly broad requests.[12] Further, in the context of the fifth factor, the Board has construed “burdensome” very broadly. The burdens considered include financial burdens, burdens on human resources, and burdens on meeting the one-year statutory deadline for completion of the Inter Partes Review.[13] Combined, factors four and five ensure that the responding party may easily identify what is being requested and quickly respond.

The Board’s first CBM additional discovery decision occurred prior to it setting forth the Garmin factors.[14] However, in its second CBM additional discovery decision, the Board modified the Garmin Factors for CBM’s good cause standard.

In modifying the Garmin Factors, the Board specified that “[t]he mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient to establish a good cause showing.”[15] The Board also held that the good cause standard bars requests for the other party’s litigation positions and underlying basis for these opinions, and information that can be reasonably generated without a discovery request.[16] And like the IPR additional discovery requests, CBM additional discovery requests must include easily understandable instructions and questions, and not be overly burdensome.[17]

Since the Garmin decision, the Board has rigorously compared the party’s additional discovery requests against these five factors. The result is that the Board has denied the majority of these requests after performing this comparison. As of September 7, 2014, the Board denied approximately 70% of all unique motions for additional discovery,[18] and denied or partially denied almost 80% of these motions. Understanding what additional discovery the Board allows offers a helpful road map for future requests.

Parties most frequently move for additional discovery regarding objective indicia of nonobviousness. Yet, to date, the Board has only granted one such motion. In Schott Gemtron Corp. v. SSW Holding Co., the petitioner requested a document that the patent owner’s witness relied upon in preparing sales projections for a commercial success assertion.[19] The petitioner used the witness’s deposition testimony as pre-existing evidence that the witness relied upon information within the requested document.[20] The Board granted the request as the witness’s “testimony supports a conclusion that more than a mere possibility or mere speculation that something useful will be uncovered by producing the document” and “it is narrowly tailored to a single document, and therefore, would not be overly burdensome for Patent Owner to produce.”[21]

In most cases, however, the Board uses the first Garmin Factor to deny requests for additional discovery. In these cases, starting with its very first IPR additional discovery decision, the Board determined that the motion lacked “a threshold amount of evidence or reasoning tending to show beyond speculation that the information to be discovered will be ‘useful’ to [the requester]” and denied the motion.[22] Frequently, the missing evidence is the nexus between the claimed invention and the additional discovery requested.[23]

After secondary considerations of obviousness, parties most often request real parties-in-interest discovery. Parties are required to identify real parties-in-interest to: (1) assist members of the Board to identify potential conflicts; (2) assure proper application of the statutory estoppel provisions; (3) protect patent owners from harassment; (4) prevent parties from having a “second bite at the apple”; and (5) protect the integrity of the USPTO and the Federal courts.[24] Strategically, parties request real party-of-interest discovery to obtain evidence that will terminate the proceedings or estop a party in an underlying litigation.

The Board has only granted three motions for additional discovery regarding real parties-in-interest. In Arris Group, Inc. v. C-Cation Techs., LLC, the patent owner requested an indemnification agreement between petitioner and Comcast that could prove that the petition was time barred under 35 U.S.C. § 315(b).[25] The Board granted the motion because the patent owner “provided evidence showing: (1) the agreement exists; (2) Comcast made indemnification claims against Petitioner; (3) Petitioner had contractual rights with Comcast regarding exercising ‘sole control’ of the litigation; and (4) Petitioner resolved the indemnification claims with Comcast.”[26] While this evidence was not enough to show that petitioner and Comcast were privies, the Board held it was enough to grant production of the indemnification agreement between those companies.

In Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., the Board granted-in-part a patent owner’s request for real party-in-interest discovery. Here, the patent owner pointed to an indemnification agreement and a declaration that disputed whether indemnification was owed under the agreement.[27] The Board granted additional discovery regarding the dispute identified in the declaration, but denied discovery based on inferences that the patent owner made from what was omitted from the declaration.[28] “Such inferential allegations amount to a ‘mere possibility of finding something useful, and mere allegation that something useful will be found.’” [29]

Most recently in Samsung Electronics Co. v. Black Hills Media, LLC, the Board partially granted a patent owner’s request for real party-in-interest discovery based on a known indemnification provision in an agreement and evidence that the petitioner had previously denied receiving indemnification under the agreement, when in fact it did.[30] The Board also granted additional discovery because the ITC previously found that the third party had an interest in whether the patent at issue was valid.[31] While the Board found some of the patent owner’s discovery requests to be overly broad, it granted limited discovery by narrowing the requests.[32]

While in Arris Group, Atlanta Gas Light, and Samsung Electronics, the Board granted additional discovery based on evidence of an indemnification agreement, evidence of such an agreement is not always sufficient. For example, in Apple Inc. v. Achates Reference Publ’g, Inc., the Board denied the patent owner additional discovery based on an indemnification clause in petitioner’s software development kit agreement.[33] As explained in Broadcom Corp. v. Telefonaktiebolaget LM Ericsson, “[p]aying for trial expenses pursuant to indemnity normally does not establish privity or control.”[34] Nor does filing an amicus brief, filing an IPR petition, sharing experts, or minor participation in trial establish privity or control.[35]

The Board is more likely to grant additional discovery that is not related to secondary considerations or real parties-in-interest. To date, these other requests have been more narrowly tailored and fit cleanly within the Garmin Factor framework. For example, the Board granted a patent owner’s request for production of laboratory notebooks and documents containing the protocols and procedures followed in preparing compositions because the petitioner’s expert testified about these documents.[36] The Board also granted a petitioner’s request for email communications between the patent owner’s two experts that these experts relied upon in formulating their opinion.[37] As another example, the Board granted a patent owner’s request for a file wrapper of an abandoned patent application because the petitioner made statements during prosecution regarding the same prior art reference used in the IPR.[38]

For a party seeking additional discovery, the Board decisions provide some important practice tips to increase the likelihood that the additional discovery requested fits within the Garmin framework. First, the request must be very narrow and tailored—a movant should ask for exactly what is needed. Second, the requested discovery should be tied directly to something relied upon by an expert or declarant. Third, a movant should only ask for additional discovery that cannot be obtained through any other means. Fourth, a movant must present evidence that shows that (1) the additional discovery materials requested do exist and that (2) the materials will have a direct favorable bearing on his positions. Importantly, movants should fully utilize the depositions of the opposing party’s declarants and experts as a means to utilize these practice tips. Deposition testimony of the declarants and experts is frequently cited by the Board in their analysis and are important evidence in establishing the factual basis necessary to successfully meet the five Garmin factors.

[1] See H.R. Rep. No. 112-98 at 45-48 (2011).

[2] Office Patent Trial Practice Guide, 77 Fed. Reg. 48761 (Aug. 14, 2012) (codified at 37 C.F.R. pt. 42) [hereinafter Practice Guide].

[3] 37 C.F.R. § 42.51(b)(1).

[4] Id.; see also 35 U.S.C. § 316(a)(5) (stating that, aside from depositions, discovery shall be limited to “what is otherwise necessary in the interest of justice”); 37 C.F.R. § 42.51(b)(2) (reiterating the “interests of justice” standard that applies to additional discovery in the absence of the parties’ agreement).

[5] Id.

[6] See Practice Guide, supra note 2, at 48761; 37 C.F.R. § 42.224(a).

[7] Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, No. IPR2012-00001, 2013 WL 2023626, at *4 (P.T.A.B. Mar. 5, 2013).

[8] Id.

[9] Id.

[10] Id.

[11] Id.

[12] Id.

[13] See id.

[14] SAP Am., Inc. v. Versata Dev. Group, Inc., No. CBM2012-00001, Paper 24 at 3-5 (P.T.A.B. Nov. 15, 2012). Without specifying its rationale, the Board granted-in-part a motion requiring the petitioner to produce five documents produced during a related district court litigation, but not documents relating to “R/3” documentation.

[15] Bloomberg Inc. v. Markets-Alert Pty Ltd., No. CBM2013-00005 (JYC), 2013 WL 5947684, at *3 (P.T.A.B. May 29, 2013).

[16] Id.

[17] Id.

[18] It is common for the Board to issue a single ruling for multiple proceedings. For example, the Board makes common discovery rulings for IPR2013-00043 to IPR2013-00050 and IPR2013-00052 to IPR2013-00053. If counted separately, the percentage of denials increases.

[19] No. IPR2013-00358, Paper 78 at 2 (P.T.A.B. May 16, 2014).

[20] Id. at 3-4.

[21] Id. at 4.

[22] Garmin, No. IPR2012-00001, 2013 WL 2023626, at *5.

[23] Id.; see also Microsoft Corp. v. Proxyconn, Inc., No. IPR2012-00026 (TLG), 2013 WL 6327751, at *2–3 (P.T.A.B. Mar. 8, 2013) (commercial success); Palo Alto Networks, Inc. v. Juniper Networks, Inc., No. IPR2013-00369, Paper 36 at 4 (P.T.A.B. Feb. 5, 2014) (copying).

[24] Practice Guide, supra note 2, at 48759.

[25] No. IPR2014-00746, Paper 15 at 2 (P.T.A.B. Jul. 24, 2014).

[26] Id. at 4 (footnotes omitted).

[27] No. IPR2013-00453, Paper 40 at 5-6 (P.T.A.B. Apr. 23, 2014).

[28] Id. at 7-9.

[29] Id. at 9.

[30] No. IPR2014-00735, Paper 17 at 4, 7 (P.T.A.B. Oct. 2, 2014).

[31] Id. at 6-7.

[32] Id. at 7-10.

[33] Nos. IPR-2013-00080/2013-00081, 2013 WL 6514049, at *2-3 (P.T.A.B. Apr. 3, 2013).

[34] No. IPR2013-00601, Paper 23 at 11 (P.T.A.B. Jan. 24, 2014).

[35] Id. at 7, 11-13.

[36] Corning Inc. v. DSM IP Assets B.V., No. IPR2013-00043, 2013 WL 5970159 at 2-3 (P.T.A.B. June 21, 2013).

[37] Apple Inc. v. Achates Reference Publ’g, Inc., No. IPR2013-00080, Paper 58 at 9 (P.T.A.B. Jan. 31, 2014).

[38] Int’l Sec. Exch., LLC v. Chi. Bd. Options Exch., Inc., No. IPR2014-00097, Paper 20 at 2-3 (P.T.A.B. Jul. 14, 2014).


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