In defending two of its patents which were subject to IPR, the Patent Owner requested additional discovery regarding several objective indicia of nonobviousness—namely, copying, long-felt but unmet need, and failure by others. Specifically, the Patent Owner requested:
1) Documents showing Petitioner agents’ or employees’ access to Patent Owner’s patented technology, including documents showing how that information was used by Petitioner; and
2) Documents showing customer requests that led to Petitioner’s development of its products accused of infringement in the related district court litigation.
The PTAB may grant additional discovery if the moving party shows “that such additional discovery is in the interests of justice.” 37 C.F.R. § 42.51(b)(2)(i). In making that determination, the PTAB applies the so called Garmin factors: 1) whether there is more than a mere possibility or allegation that something useful will be found; 2) whether the requesting party seeks the other party’s litigation positions and the underlying basis for those positions; 3) the requesting party’s ability to generate equivalent information by other means; 4) whether the instructions are easily understandable; and 5) whether the requested discovery is overly burdensome.
The PTAB determined that the first three factors favored the Patent Owner’s additional discovery. The fourth and fifth factors, though, weighed against the additional discovery. Among other reasons, the requests were not limited to documents from a specified time range, nor did they specifically identify which of Petitioner’s products applied to the requests. Further, the Patent Owner delayed in seeking the requested discovery, filing its motion only two weeks before its Response to the Petition was due.
The PTAB’s solution was a compromise. Due to the fourth and fifth Garmin factors, the PTAB concluded that it could not grant the Patent Owner’s motion in full. But the Patent Owner had represented in its motion that it could specifically identify four documents that would satisfy the requests. The PTAB took that representation as a fall-back position, and ordered the Petitioner to produce those four documents
Telesign Corp. v. Twilio Inc., IPR2017-01976 IPR2017-01977, Paper 22 (PTAB June 7, 2018)