Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC

When a party moves for additional discovery in an inter partes review under 35 U.S.C. § 316(a)(5) and 37 C.F.R. § 42.51(b)(2), the Board will decide whether the discovery is "necessary in the interest of justice" by weighing five factors: (1) more than a possibility and mere allegation, (2) litigation positions and underlying basis, (3) ability to generate equivalent information by other means, (4) easily understandable instructions, and (5) requests not overly burdensome to answer. Under Factor (1), the movant must already possess a threshold amount of evidence or reasoning tending to show beyond speculation that something "useful" will be uncovered, and "useful" means favorable in substantive value to a contention of the movant, not merely "relevant" or "admissible." No prior precedent directly addressed this issue; the decision sets out the factors the Board had previously given the patent owner in an order authorizing the motion (Paper 20) and applies them. It rejects a district-court style standard, noting that the movant's rewritten "Likely to Yield Relevant, Admissible Evidence" test resembles district court discovery and is incorrect. For a petitioner, the decision gives a strong basis to oppose broad discovery served on it, especially requests aimed at its litigation positions, its engineering files, or its sales data, and to cite burden evidence such as labor-hour and cost estimates. For a patent owner, seeking additional discovery, for example on secondary considerations, requires evidence in hand before the motion is filed, including evidence of nexus, copying and the like, and routine discovery under 37 C.F.R. § 41.51(b)(1)(iii) reaches only specific information known to be inconsistent with a position taken. The Board relied on In re Allen, 324 F.2d 993, 997 (CCPA 1963), for failure of others, and on Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010), and Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004), for copying. LEGAL TEST OR STANDARD: Discovery must be "necessary in the interest of justice" under 35 U.S.C. § 316(a)(5). Factors: 1. More Than A Possibility And Mere Allegation (the movant should already possess evidence tending to show beyond speculation that something useful will be uncovered); 2. Litigation Positions And Underlying Basis (asking for the other party's litigation positions and their basis is not necessary in the interest of justice); 3. Ability To Generate Equivalent Information By Other Means; 4. Easily Understandable Instructions; 5. Requests Not Overly Burdensome To Answer (financial burden, burden on human resources, and burden on meeting the time schedule; requests should be sensible and responsibly tailored according to a genuine need). TRIGGERING FACTS: The patent owner moved for additional discovery after institution, seeking nine interrogatories, ten document requests and a Fed. R. Civ. P. 30(b)(6)-style deposition, mostly aimed at secondary considerations (commercial success, failure of others, copying, long-felt need). It offered no threshold evidence of nexus, copying or failure of others. Its only declaration showed that a Garmin lawyer had evaluated the patent and found no infringement. The petitioner showed a burden of millions of pages of engineering documents and an estimated $52,500 to $82,500 in cost. The Board found no undue delay, since the first request for authorization came about five weeks after institution. KEY QUOTE: "In the context of Factor (1), “useful” means favorable in substantive value to a contention of the party moving for discovery." (Paper 26, p. 7) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Before moving for additional discovery, assemble and put in the motion a threshold evidentiary showing, including nexus where commercial success is at issue, that the requested material will be favorable to your contention. Draft narrowly tailored requests with short instructions, and do not rely on a relevance and admissibility standard or label broad requests as routine discovery.