Scope of Discovery

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.

Similarly, in Microsoft Corp. v. Proxyconn, Inc. (IPR2012-00026), patent holder Proxyconn sought discovery of Microsoft’s sales data and marketing/promotional materials for evidence that the commercial success of the Windows Server product was attributable to the “Remote Differential Compression” (RDC) feature. The discovery requests were denied for failure to show relevance, “particularly so here, where RDC is itself not a product but one feature of a complex software product.”

In Apple Inc. v. Achates Reference Pub., Inc. (IPR2013-00080; -00081), patent holder Achates requested discovery of any agreements between the defendants in the co-pending litigation (including any indemnification and joint defense agreements) to determine whether Apple’s co-defendants in the related litigation are real parties-in-interest or privies of Apple. Some of Apple’s co-defendants were served with lawsuits more than one year prior, which would bar them from bringing an inter partes review. See 35 U.S.C. § 315(b). The PTAB denied this request, writing: “In light of this [legislative history of the AIA], and given the statutory deadlines required by Congress for inter partes review proceedings, the Board will be conservative in authorizing additional discovery.”