Takeaway: In order to obtain additional discovery of the sales of petitioner’s products to evidence commercial success, a patent owner must show not only that the products practice the claimed invention, but also that the commercial success is due to the unique characteristics of the claimed invention, not a characteristic taught in the prior art.

In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery. Patent Owner sought discovery pertaining to its assertion of commercial success as evidence of non-obviousness. Specifically, Patent Owner requested from Petitioner certain revenue numbers.

The Board stated that the party seeking discovery beyond the limited discovery provided by rule must show that the discovery is “necessary in the interest of justice.” 35 U.S.C. § 316(a)(5). The Board opined that it is conservative in authorizing additional discovery, and that the party must be in possession of evidence tending to show beyond speculation that something useful, or favorable in substantive value to a contention of the party moving for discovery, will be uncovered.

The Board concluded that Patent Owner had not met its burden because it did not provide the threshold amount of evidence required to show an alleged nexus between the claimed invention and any commercial success of Petitioner’s products. Patent Owner failed to allege that any commercial success is due to the unique characteristics of the claimed invention, and not by a characteristic that was taught in the prior art.

Chums, Inc. and Croakies, Inc. v. Cablz, Inc., IPR2014-01240

Paper 18: Decision Denying Patent Owner’s Motion for Additional Discovery

Dated: April 7, 2015

Patent 8,366,268 B2

Before: Josiah C. Cocks, Jeremy M. Plenzler, and Kristina M. Kalan

Written by: Plenzler