The Patent Owner also produced a declaration from a doctor who directed the tests, but the declaration merely stated that the tests were conducted pursuant to certain American Society for Testing and Materials standards. The declaration did not describe any of the specific instructions that SIMTech followed in conducting the tests.
The Petitioner filed a motion seeking two categories of documentary evidence: (i) the instructions for conducting the verification tests that the doctor had provided to SIMTech, and (ii) the test reports and other raw data that SIMTech provided to the Patent Owner after completing the tests. Paper 22 at 3. The Petitioner also sought “any test results or other data that are inconsistent with a position advanced by the Patent Owner or its experts during the proceeding,” but the Board found this request moot based on the Patent Owner’s representation that it had already produced all such information as part of “routine discovery.” Id. at 16.
In deciding the motion, the Board first observed that under Section 42.51(b)(2)(i), “additional discovery” is permissible if the moving party shows that such discovery is “in the interests of justice.” To determine if the moving party has made this showing, the Board considers the so-called “Garmin Factors,” which include: (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; (3) the requesting party’s ability to generate equivalent information by other means; (4) whether the instructions are easily understandable; and (5) whether compliance with the requested discovery would be overly burdensome. The Board, in applying these factors, concluded that they weighed in favor of granting the motion. Id.
With respect to Factor 1, the Board ruled that the requested documents would be useful since they would help the Petitioner fully understand and evaluate—and thereby effectively rebut—the Patent Owner’s arguments and proffered evidence. The Board stressed that although the Patent Owner “relie[d] heavily on the results of the [verification] tests in contesting [the] Petitioner’s unpatentability arguments,” it had not provided the underlying test data or adequate detail about how the tests were performed. Id. at 4, 11. The Board reasoned that “[w]hen a party conducts tests in support of its positions and relies on those tests in its submissions to the Board, it is useful for the opposing party to understand how the tests were conducted.” Id. at 5. The Board emphasized that this “is true regardless of whether the information concerning how the tests were conducted ultimately reveals any information that undermines the credibility of the test data.” Id.
Turning to Garmin Factor 2, the Board found that the Petitioner’s requests did “not impermissibly seek [the Patent Owner’s] litigation positions,” but instead only sought information about the bases for the positions that the Patent Owner already had expressly adopted. Id. at 7, 12. The Board noted that Factor 2 “is implicated, for example, by a party seeking discovery on an issue that has not been raised by the opposing party.” Id. at 7. But as the Board added, the Patent Owner in this case “ha[d] already relied on the studies/tests that are the subject of [the] Petitioner’s discovery request[s].” Id.
On Factor 3, the Board’s analysis centered on the Patent Owner’s assertion that the Petitioner could simply run its own tests, using information obtained through depositions (such as “test parameters”). Disagreeing, the Board explained that “cross-examination [is not] a substitute for documentary evidence,” especially considering that such documents would “be useful to [the] Petitioner in preparing for the cross-examination.” Id. at 7, 13 (emphasis in original). The Board also observed that the “Petitioner’s potential ability to conduct its own tests [is not] particularly relevant,” given that “[d]ifferent data, obtained by a different party in a different facility using different [] samples under different conditions, may be of limited use in helping [the] Petitioner to understand and respond to [the] Patent Owner’s particular data.” Id. at 13.
On Factor 4, the Board ruled that the Petitioner’s requests were unambiguous and “easily understandable.” Id. at 8, 14. As the Board explained, the “plain language” of the requests made clear which types of documents were being sought. Id. at 9.
Finally, the Board concluded that Factor 5 also supported granting the motion, agreeing with the Petitioner that the requested discovery was “‘not overly burdensome to answer’ because the requested documents ‘should be a confined set of documents easily gathered and produced.’” Id. at 9-10. The Board thus rejected the Patent Owner’s argument that the requests were “extremely overbroad and unclear,” which the Patent Owner advanced “[w]ithout significant elaboration or an attempt to quantify the number of documents that th[e] request[s] might encompass.” Id. at 10. The Board additionally overruled the Patent Owner’s privilege and work product objections, stating that because the Patent Owner “affirmatively relied on the studies/tests in support of [its] positions through the use of a testifying expert, [it] cannot shield from discovery information concerning how the test data was obtained.” Id.
Practice Tip: If a party to an IPR relies on test results to support its arguments, the opposing party should consider seeking production of the underlying raw data and instructions. That information may be helpful in assessing the reliability of the results and will afford the requesting party a fair cross-examination of a witness that relies on those results. In its request for “additional discovery,” a party should address each of the Garmin Factors to explain why production of such information is in “the interests of justice.”
Apple Inc. v. Singapore Asahi Chemical & Solder Industries PTE Ltd., IPR2019-00377, Paper 22 (Oct. 21, 2019)