In Requesting Additional Discovery, When? Can Be Just as Important as What?

January 27, 2017
Patent Office Trials Blog

In Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC, IPR2012-00001, (PTAB March 5, 2013), the Board set forth five factors—commonly referred to as the Garmin factors—for determining whether “additional discovery” will be granted to a party during a proceeding before the Board, such as an inter partes review (IPR) covered business method review (CBM) or post-grant review (PGR).  Briefly, the five Garmin factors are:

1.         More Than A Possibility And Mere Allegation;
2.         Litigation Positions And Underlying Basis;
3.         Information Of Which Equivalent Information Can Be Generated By Other Means;
4.         Made Via Easily Understandable Instructions; and
5.         Overly Burdensome To Answer.

See IPR2012-00001, Paper 26 at 6-7.

The Board infrequently grants additional discovery requests based on the above factors.  The burden on a party requesting additional discovery is further heightened by additional considerations related to these five Garmin factors, which the Board may consider even if the parties do not raise the issue.  These include the impact on schedule and the timing of the request.

Impact on the schedule

In determining whether to grant additional discovery, the Board may consider whether the request places a significant burden on meeting the time schedule of inter partes review, even if not specifically addressed by the parties.  Further, these considerations may be used in applying the fifth Garmin Factor, whether a request is overly burdensome to answer.  For example, in Wavemarket Inc. v. Locationet Systems Ltd., IPR2014-00199, the Patent Owner requested additional discovery from Petitioner.  See IPR2014-00199, Paper 34 at 2.  In particular, the Patent Owner sought to establish that various entities which were not named real parties in interest are in fact so, which could have resulted in dismissal of the Petitioner’s challenge against the patent in question.  Id.  In an attempt to demonstrate this position, Patent Owner requested, inter alia, all indemnification agreements and communications about the indemnification by and between Petitioner and the entities.  In denying the request for additional discovery and citing to the fifth Garmin factor, the Board stated, “the requested discovery may place a significant burden on meeting the time schedule of inter partes review,” noting the proceedings in the inter partes review were instituted nearly three months prior, and are no longer in the preliminary stage.  Id. at 8.  The Board considered the time schedule burden even though the issue was “not addressed by the parties.”  Id.  Similarly, in denying a request for additional discovery in Intri-Plex Technologies v. Saint Gobain Performance Plastics, IPR2014-00309, the Board stated they are “mindful of the burden [additional discovery requests] may place on meeting the time schedule,” for inter partes review.  See IPR2014-00309, Paper 40 at 9.  Here, the Board noted the burden based on a broad request for Patent Owner’s sales documents of a certain category of product, spanning several years.  The Board also noted the difficulties in meeting the inter partes review schedule should the additional discovery request be granted.

Timing of request

In determining whether to grant additional discovery, the Board may consider various factors related to whether the request is timely.  In this regard, the timing of the request may also affect the burden of meeting the time schedule of inter partes review, and therefore may relate to the Board’s analysis of the fifth Garmin Factor.

For example, in Apple v. Evolutionary Products, IPR2014-00086, in denying Patent Owner’s request to file a motion for additional discovery, the Board found the issue was not ripe for discovery.  The Patent Owner’s request related to investigating whether Petitioner was coordinating with other parties the Patent Owner has sued for alleged infringement.  The Patent Owner argued that “if such coordination is taking place, another defendant could be a real party-in [] interest or a privy [], thus creating estoppel.”  See IPR2014-00086, Paper 13 at 2.  The Petitioner countered that the discovery sought by Patent Owner was premature, because “estoppel with respect to a real party-in-interest or a privy in proceedings before the office under 35 U.S.C. § 315(e)(1) or in civil actions or other proceedings under 35 U.S.C. § 315(e)(2) arises only after a final written decision under 35 U.S.C. § 318(a).”  In denying the request to file a motion for additional discovery, the Board stated because a final decision has not been rendered in the instant proceeding, the district courses are stayed, and there are no other proceedings before the Office, the “issue is not ripe for discovery.”  See Id. at 4

Other timing issues, such as delay, can also be considered by the Board in determining whether to grant additional discovery.  For example, in Schott Gemtron v. SSW Holding Co., IPR2013-00358, the Board found that a “delay in requesting additional discovery weighs against granting [a motion for additional discovery].”  See IPR2013-00358, Paper 43 at 7.  In this case the Patent Owner filed the motion for additional discovery to obtain evidence related to the Patent Owner’s assertion of commercial success as a secondary consideration of nonobviousness.  However, the Patent Owner did not request a conference call seeking authorization for additional discovery until almost two months after institution of the trial.  Similarly, in St Jude Medical v. University of Michigan, IPR2013-00041, in denying Patent Owner’s request for additional discovery, the Board determined that the moving party failed to show “it acted timely in making the current request.”  See IPR2013-00041, Paper 20 at 4.

Although requests for additional discovery should be made in a timely manner, the Board has determined requests to be premature, particularly when the request involves an uninvolved third party.  For example, in SAP America v. PiNet International, IPR2013-00195 the Board determined a Petitioner’s request for additional discovery from a third party to be premature because the request was based on speculation that the Patent Owner will seek to amend the claims or make certain unidentified arguments.  In denying the motion, the Board stated “the Board is not inclined to authorize a motion to compel such discovery from an uninvolved third party without a more clear articulation of the reason such discovery is necessary, the scope of information sought and its intended use.”  See IPR2013-00195, Paper 17 at 6.

Thus, in applying the already onerous Garmin factors, a party requesting additional discovery needs to consider timing on multiple fronts, to avoid prejudicing the tribunal’s ability to satisfy the schedule and to avoid making a request too early, as well as too late.



Nelson D. Runkle

Email: nrunkle

Mr. Runkle is an associate in the firm’s Electrical/Mechanical Practice Group. A former Patent ‎Examiner at the USPTO, he assists clients in the procurement of both U.S. and foreign ‎patents, which includes the preparation and prosecution of patent applications. Mr. Runkle’s practice ‎includes the preparation and prosecution of patent applications in the electrical arts, such as various display panel technologies, computer ‎hardware, software architectures, digital multimedia broadcasting, telecommunications ‎systems, and information storage and retrieval systems.‎