Takeaway: Although a definite nexus had not been identified between the desired documents and the claims at issue, reasoning tending to show that the documents will have substantive value regarding secondary considerations may be sufficient to satisfy the first “Garmin factor.”

In its Decision, the Board granted Patent Owner’s Motion for Additional Discovery. Patent Owner requested from Petitioner twelve documents that Patent Owner alleges are related to secondary considerations of non-obviousness. The Board applied the five “Garmin factors” to determine whether to grant Patent Owner’s request.

On the first factor, Patent Owner argued that its litigation counsel have already identified the twelve documents from the thousands of documents produced by Petitioner as relating to its secondary consideration. Patent Owner alleged that this identification establishes more than a threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be uncovered. Petitioner argued that Patent Owner has not identified any nexus between the documents sought and the claims at issue. The Board determined that Patent Owner’s assertion is not based on mere speculation, but direct input from litigation counsel. The Board stated that although Patent Owner had not identified a definite nexus between the desired documents and the claims at issue, it has provided sufficient reasoning tending to show that the documents will have substantive value regarding secondary considerations.

On the second factor, the Board was persuaded that Patent Owner does not seek Petitioner’s litigation positions, because the documents sought already have been produced to Patent Owner’s litigation counsel.

Patent Owner alleged that it cannot generate the requested information independently because the documents relate to Petitioner’s “internal analysis and perceptions.” Petitioner argued that Patent Owner had more than three years to identify the evidence supporting its secondary considerations. The Board determined that the third Garmin factor favors neither party.

The fourth and fifth Garmin factors, according to the Board, favor Patent Owner. Petitioner argued that the request would be burdensome and risk harm resulting from the disclosure of confidential information. The Board was not persuaded by these arguments. Thus, Patent Owner’s motion to produce the identified documents was granted.

CHEVRON NORTH AMERICA, INC., POSITEC TOOL CORPORATION, POSITEC USA, INC., and HILTI, INC. v. MILWAUKEE ELECTRIC TOOL CORPORATION,IPR2015-00595, -00596, -00597
Paper 31: Decision on Motion for Additional Discovery
Dated: October 30, 2015
Patents: 7,944173, 7,554,290, 7,999,510
Before: Grace Karaffa Obermann, Patrick R. Scanlon, and Carl M. DeFranco
Written by: Scanlon