Authored by Steven S. Yu, M.D.
Discovery rulings in IPR proceedings so far reveal that the APJs are resisting any attempt at expansive litigation-type discovery. Two of the recent discovery rulings relate to the patent holder’s requests relating to objective evidence of non-obviousness. In Garmin International Inc. v. Cuozzo Speed Technologies LLC (IPR2012-00001), patent holder Cuozzo sought discovery for evidence of commercial success brought on by Garmin’s use of the patented feature. In particular, Cuozzo sought interrogatory answers, documents, as well as the deposition of a corporate representative (in the manner of a 30(b)(6) deposition under the Federal Rules) for information about the design, development, and commercialization of the patented feature in Garmin’s products, as well as Garmin’s own views about the commercial success attributable to the patented feature. The discovery requests were denied for a number of reasons, including Cuozzo’s failure to demonstrate a nexus between commercial success and the patented features.