By Matthew L. Cutler, Principal
Motions for Additional Discovery in inter partes review proceedings remain difficult to win. Our latest statistics indicate that such motions are only granted at a rate of about 28%. As such, it is worth noting the grant of such a motion in Scott Gemtron Corp. v. SSW Holding Co., Inc., IPR2013-00358. In that case, Petitioner was granted discovery regarding an otherwise undisclosed document, relied upon by Patent Owner’s expert witness, that supported Patent Owner’s assertions of commercial success. Paper 78 at 3.
As has become clear in IPR practice, discovery in an inter partes review proceeding is far less than what is available in district court patent litigation, as Congress intended inter partes review to be a quick and cost effective alternative to litigation. Id. at 2. A party seeking beyond routine discovery (i.e., deposition of an expert) must do so by motion and must show that it is “necessary in the interest of justice.” 35 U.S.C. § 316(a)(5). Id. at 2.
The Board considers various factors in determining whether additional discovery in an inter partes review proceeding is necessary in the interest of justice, including the fact that, 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. Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 20.
Here, as mentioned, Petitioner sought an undisclosed document, relied upon by Patent Owner’s expert witness, that purported to support Patent Owner’s assertions of commercial success. Paper 78 at 3. In deposition, Petitioner was able to learn about the document from Patent Owner’s expert and that testimony supported a conclusion that it was more than a mere possibility or mere speculation that something useful will be uncovered by producing the document. Paper 78 at 4. Also, because the request was tailored to a single document and, therefore, would not be overly burdensome for Patent Owner to produce, bolstered Petitioner’s motion. Id. at 4. The Board additionally stated, “Determining the factual basis for a declarant’s opinions is a proper inquiry during discovery…” Id. at 4. Therefore, the Motion for Additional Discovery was granted. Id. at 6.