Garmin Int’l Inc. v. Cuozzo Speed Techs LLC,, Case IPR2012-00001 (Mar. 5, 2013) (Paper 26)

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Takeaway:

The Board set forth five factors that should be used to determine whether discovery requests should be granted as “necessary in the interest of justice.”

Summary (Informative) :

Petitioner Garmin Int’l Inc. (“Garmin”) filed a petition challenging claims of U.S. Patent No. 6,778,074 (“the ’074 Patent”). After institution Patent owner, Cuozzo Speed Techs. LLC. (“Cuozzo”) filed requests for discovery. The Board rejected Cuozzo’s attempt to characterize the discovery as “routine,” because Cuozzo’s requests cast a wide net directed to broad classes of information.

The Board also found that Cuozzo’s requests did not satisfy the “necessary in the interest of justice” standard for additional discovery. The Board set forth and applied the following five factors for determining whether to allow additional discovery.

1. More Than A Possibility And Mere Allegation — The mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient to demonstrate that the requested discovery is necessary in the interest of justice. The party requesting discovery should already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered.

2. Litigation Positions And Underlying Basis — Asking for the other party’s litigation positions and the underlying basis for those positions is not necessary in the interest of justice. The Board has established rules for the presentation of arguments and evidence. There is a proper time and place for each party to make its presentation. A party may not attempt to alter the Board’s trial procedures under the pretext of discovery.

3. Ability To Generate Equivalent Information By Other Means – Information a party can reasonably figure out or assemble without a discovery request would not be in the interest of justice to have produced by the other party. In that connection, the Board would want to know the ability of the requesting party to generate the requested information without need of discovery.

4. Easily Understandable Instructions — The questions should be easily understandable. For example, ten pages of complex instructions for answering questions is prima facie unclear. Such instructions are counter-productive and tend to undermine the responder’s ability to answer efficiently, accurately, and confidently.

5. Requests Not Overly Burdensome To Answer — The requests must not be overly burdensome to answer, given the expedited nature of inter partes review (IPR). The burden includes financial burden, burden on human resources, and burden on meeting the time schedule of IPR. Requests should be sensible and responsibly tailored according to a genuine need.

Much of the Board’s analysis focused on factor (1). The Board stated that “useful” means favorable in substantive value to a contention of the party moving for discovery. The Board found that Cuozzo had not presented evidence or reasoning tending to show beyond speculation that the requested information relating to secondary considerations of nonobviousness would be useful to Cuozzo.ons of nonobviousness would be useful to Cuozzo.

Case Collard

His practice focuses on patent disputes but includes software licensing, trade secrets, and other commercial litigation. He provides practical and cost effective options alongside creative legal strategies. Case prosecutes and defends cases around the country, primarily in Colorado and California where he is a member of the bar, but also in E.D. Texas, E.D. Virginia, N.D. Illinois, Delaware, and New Jersey. He advocates for clients through all phases of litigation, from pre-trial diligence through trial and post-trial briefing. He is an engineer and registered patent attorney. His technical background allows him to work closely with experts and inventors to fully understand the technology at issue and handle IP disputes at the USPTO or in the courts.

Clint Conner

Clint’s practice focuses on intellectual property with an emphasis on patent litigation, inter partes reviews, and patent enforcement strategies. Although he has remained focused on U.S. intellectual property law throughout his career, he brings an international perspective, having spent nearly five years representing companies in U.S. patent litigation while living and working in Tokyo. Before attending law school, Clint was an engineer for three years with Lucent Technologies’ Bell Labs (now Alcatel-Lucent).

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