Takeaway: The movant is not always required to show a nexus between the additional discovery and the claims of the patent at issue when moving for additional discovery.

In its Decision, the Board granted Patent Owner’s Motion for Additional Discovery pertaining to its assertions of secondary considerations of nonobviousness, particularly regarding copying.  The Board also granted Patent Owner’s Motion to Seal the Motion for Additional Discovery and a Joint Motion to Enter Protective Order. 

Regarding the Motion for Additional Discovery, the Board began by stating that discovery in inter partes review proceedings is less than what is normally available in litigation in a district court and the Board is conservative in authorizing discovery.  The party seeking discovery beyond what is permitted by the rules must show “that such additional discovery is necessary in the interests of justice.” 37 C.F.R. § 42.51(b)(2)(i).  The Board considers various factors in making this determination, including more than a possibility and mere allegation that something useful will be discovered, requests that do not seek the other party’s litigation positions and the underlying basis for those positions, the ability to generate equivalent information by other means, easily understandable instructions, and requests that are not overly burdensome to answer.

Patent Owner specifically sought a clean copy of Petitioner’s design drawing in order to submit and use the drawing in the instant proceeding.  Petitioner stated that the drawing is protected from discovery on the basis of Federal Rule 403, which renders settlement evidence inadmissible when it is used to prove or disprove the validity or amount of a disputed claim, or to impeach by a prior inconsistent statement or a contradiction.  The Board found that the drawing was not protected from discovery.

Patent Owner argued that the requested discovery is narrowly tailored and not speculative.  Petitioner argued that the information being sought does not contain useful information because the drawing does not have a sufficient nexus to the patent claims at issue and that it may be obtained through other means.  The Board found that a showing nexus is not required, and that Petitioner may address the lack of nexus in its Reply.  The Board also found that to Petitioner’s argument that the drawing is confidential is more appropriate for opposition to the motion to seal, not for the motion for additional discovery, and that Petitioner does not dispute that Patent Owner could not obtain a clean copy of the drawing by other means.

Regarding the Motion to Seal and Motion to Enter Protective Order, the Board stated that there is a strong public policy for allowing all information to bee public, however, the Board, for good cause, may issue an order to protect a party from disclosing confidential information.  The Board agreed with Patent Owner that the public interest did not outweigh the parties’ interest in protecting their sensitive business information.

Hyundai Mobis Co., Ltd. and Mobis Alabama, L.L.C. v. Autoliv ASP, Inc., IPR2014-01005

Paper 32: Decision Granting Motion for Additional Discovery, Motion to Seal, and Joint Motion to Enter Protective Order

Dated: March 25, 2015

Patent 7,347,450

Before: Joni Y. Chang, William V. Saindon, and Trenton A. Ward

Written by: Chang