In Arctic Cat, Inc. v. Polaris Industries, Inc. (Case IPR2014-01427), the Patent Trial and Appeal Board (PTAB) recently denied a motion for additional discovery filed by Arctic Cat during the inter partes review of U.S. Patent No. 8,596,405 (the ‘405 Patent ).

By way of its motion, Arctic Cat sought the production of marketing and customer survey documents that it contended were highly relevant to Polaris’ argument that the ‘405 Patent is nonobvious in view of the commercial success of Polaris’ RZR vehicle.  In ruling on the motion, the PTAB evaluated the Garmin factors and found against Arctic Cat with respect to whether the additional discovery requests would have been overly burdensome to answer.

One of Arctic Cat’s key arguments against the overly burdensome nature of the additional discovery requests was that the requests were “narrower” than those to which Polaris had already been ordered to respond by the district court in co-pending litigation.  Arctic Cat essentially argued that Polaris simply had to review and produce before the PTAB what it had already reviewed and produced before the district court.

Polaris argued in response that, unlike the discovery requests before the district court, Arctic Cat’s additional discovery requests before the PTAB required Polaris to designate whether each of the documents was by nature a marketing presentation or a consumer survey.  Polaris also argued that the additional discovery requests before the PTAB were not limited by the same search terms, e-mail restrictions, and custodian restrictions that were agreed-upon by the parties before the district court.  Hence, Polaris contended that it was unclear whether its actions in producing documents before the district court would have been sufficient to satisfy its obligations before the PTAB.  On this basis, Polaris argued that the additional discovery requests by Arctic Cat were overly burdensome to answer, and the PTAB agreed.

As a takeaway, it may be helpful for a moving party to craft its additional discovery requests before the PTAB to mirror exactly those that were previously made in co-pending litigation.  This could diffuse the opposing party’s argument that the additional discovery requests are overly burdensome.  Had Arctic Cat not attempted to make its litigation discovery requests “narrower” for use in the inter partes review, the PTAB may have actually sided with Arctic Cat on the “overly burdensome” Garmin factor.