/>iTakeaway: Routine discovery includes production of any exhibit cited in a paper or testimony and relevant information that is inconsistent with a position advanced during the proceeding; additional discovery, in contrast, is only granted when necessary in the interest of justice.
In its Order, the Board denied Petitioner’s Motion for Discovery with respect to each of a plurality of Requests that Petitioner had made. In particular, Petitioner’s Motion was denied with respect to each of Petitioner’s Requests A(1)–(3) and B(1)–(5).
Petitioner had sought “routine and additional discovery pertaining to Patent Owner’s sales documents, ‘prior art’ labeling of Figure 2 in [the ’640 patent], and conception of the tolerance ring shown in Figure 2 of the ’640 patent.”
The Board referred to Petitioner’s requests for routine discovery as Routine Discovery Requests A(1) – A(3). These related to: (A)(1) – documents inconsistent with Patent Owner’s assertion that “the introduction of IPT’s knock-off product in 2009” caused Patent Owner’s flared tolerance ring sales to decline; (A)(2) – documents inconsistent with Saint-Gobain’s assertion that Figure 2 was known only to the named inventors of the ’640 Patent and not to others prior to the priority date of the ’640 Patent; and (A)(3) – documents inconsistent with Patent Owner’s assertion that the “prior art” label of Figure 2 of the ’640 patent was mistakenly added during prosecution.
The Board was not persuaded that Patent Owner had failed to comply with “routine discovery” under 37 C.F.R. § 42.51(b)(1)(iii), and instead concluded that Petitioner’s requests A(1) – (3) had been fulfilled. In doing so, the Board, citing Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC, Case IPR2012-00001, Paper 26, slip. op. 4 (PTAB Mar. 5, 2013) (informative), noted that Petitioner did not direct the Board “to any specific information known by Patent Owner to be inconsistent with its position.”
The Board referred to Petitioner’s requests for additional discovery as Additional Discovery Requests B(1) – B(5). These related to: (B)(1) – documents showing sales of Patent Owner’s flared tolerance rings from June 1, 2003; (B)(2) – documents showing sales of its tolerance rings without a flared end from June 1, 2003; (B)(3) – documents showing conception of the tolerance ring shown in Figure 2 of the ’640 patent; (B)(4) – compelling testimony regarding a purported mistake made in designating Figures 1-3 or 5 of the ’640 patent or its parent as prior art and communications about designation of Figures 1-3 or 5 as prior art; and (B)(5) – compelling production of documents referring to communications regarding designation of Figures 1-3 or 5 of the ’640 patent or its parent as prior art.
The Board determined that Petitioner had not met its burden of demonstrating that discovery of the sales information sought by Petitioner’s Requests B(1) and (B)(2) is necessary in the interest of justice. According to the Board, Petitioner “failed to present a threshold amount of evidence tending to show that the requested discovery supports its contention that ‘increase in sales of the [Patent Owner] flared tolerance rings does not have a nexus with the claimed features’ and did not “offer any evidence or sufficient reasoning as to how the requested sales information supports Petitioner’s contention.” The Board went on to note that “Requests B(1)–(2) are not ‘sensible and responsibly tailored according to a genuine need.’”
With respect to Petitioner’s Request B(3), the Board concluded that Petitioner had “failed to present a threshold amount of evidence tending to show that Request B(3) supports its contention that Figure 2 is the work of others.” The Board also found that Request B(3) was “overly broad and burdensome because it requires ‘all paper and/or electronic documents showing conception of the tolerance ring shown in Figure 2,’ which ‘include[es] but [is] not limited to inventor notebooks, invention disclosure reports, engineering or design drawings, and publications authored by one or more inventors of the ’640 Patent.’”
As for Petitioner’s Requests B(4)–(5), the Board did not see how the information in question was “useful in the context of this inter partes review.” According to the Board, there was “no dispute that Figure 2 of the ’640 patent was labeled ‘prior art,’ and therefore an admission of prior art was made during prosecution.” More particularly, according to the Board, “[t]he circumstances of how Patent Owner’s counsel made the decision to label Figure 2 do not change the fact that Figure 2 was labeled ‘prior art.’”
Intri-Plex Technologies, Inc. and MMI Holdings, Ltd. v. Saint-Gobain Performance Plastics Rencol Limited, IPR2014-00309
Paper 40: Order Denying Petitioner’s Motion for Discovery
Dated: September 4, 2014
Patent: 8,228,640 B2
Before: Michael W. Kim, William A. Capp, and Frances L. Ippolito
Written by: Ippolito
