Takeaway: The Board may deny a Motion for Additional Discovery when the scope of the Motion exceeds the Board’s previous authorization, especially in the case where the Board has previously cautioned the parties about the Board’s prohibition against unauthorized motions.

In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery because Patent Owner had not met its burden of showing that the requested additional discovery was needed in order to satisfy the interests of justice.  Also, the Board ordered that Patent Owner’s Exhibit 2001 was to be expunged.

The Board had previously authorized Patent Owner to file a Motion for Additional Discovery seeking information related to “the hand-drawn tracing analysis and the computer simulation described in the [Dr. Sasian’s] declaration.”  Subsequent to that, Patent Owner filed a Motion for Additional Discovery (Paper 14) along with a copy of a declaration (Ex. 2001) filed in a co-pending proceeding in Japan.  Petitioner opposed the Motion for Additional Discovery.

The Board denied the Motion for Additional Discovery.  The Board’s position was that it had only authorized Patent Owner to seek additional discovery on certain portions of the Declaration of Dr. Sasian.  Thus, by accompanying the Motion for Additional Discovery with a new exhibit and requesting additional discovery from Petitioner with respect to the newly-filed exhibit, Patent Owner had exceeded the Board’s previously-given authorization.  Especially because in this proceeding the Board had previously warned Patent Owner against the filing of unauthorized motions, and had not previously authorized the request for additional discovery with respect to Exhibit 2001, the Board found that denial of Patent Owner’s request for additional discovery on Exhibit 2001 and the expunging of Exhibit 2001 were appropriate.  The Board concluded its discussion of this issue by cautioning the parties that any further violation of the Board’s prohibition against unauthorized motions would result in sanctions.

As to the authorized portions of Patent Owner’s Motion for Additional Discovery, the Board applied Factors 1, 3, and 5 from Garmin Int’l, Inc. et. al. v. Cuozzo Speed Tech, LLS, IPR2012-00001, slip op. 6–7 (PTAB Mar. 5, 2013) (Paper 26) to determine if Patent Owner’s requests met the “the interests of justice” standard.  After finding that Patent Owner’s requests did not satisfy any of Garmin Factors 1, 3, and 5, the Board indicated that Patent Owner’s Motion for Additional Discovery was denied.

Seoul Semiconductor Co., Ltd and North America Seoul Semiconductor Inc. v. Enplas Corporation, IPR2014-00605 
Paper 17: Decision Denying Motion for Additional Discovery 
Date: November 5, 2014 
Patent 7,348,723 B2 
Before: Howard B. Blankenship, James B. Arpin, and James A. Tartal
Written by: Arpin