Takeaway: Where a patent owner has proffered deposition testimony as relevant to secondary indicia of non-obviousness, the Board may determine that such documents are discoverable and relevant.

In its Decision, the Board granted Petitioner’s Motion for Additional Discovery with respect to sales data and the complete deposition of Ms. Wang and Mr. Drobinski entered in the instant proceeding. The Board denied Petitioner’s Motion for Additional Discovery for the production of other testimony of Ms. Wang and Mr. Drobinski.

Petitioner had filed a motion for authorization to compel production of various documents. Patent Owner filed a response thereto. The Board noted that additional discover may be ordered where a party shows “that such additional discovery is in the interests of justice,” as stated in 37 C.F.R. § 42.51(b)(2). To make this determination, the Board applies the factors stated in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001 (Garmin).

Petitioner requested the following documents: (1) unredacted transcript of Ms. Wang, (2) unredacted transcript of Mr. Drobinski, (3) unredacted copy of Patent Owner’s sales data, (4) transcripts for Ms. Wang in any proceeding involving the ’919 patent, and (5) transcripts for Mr. Drobinski in any proceeding involving the ’919 patent. Petitioner argued that (1) requested documents cannot be found elsewhere, (2) the request is straightforward, and (3) Patent Owner will not be burdened by the request. Petitioner also argued that the documents are used by Patent Owner in rebutting Petitioner’s challenges to the ’919 patent.

Patent Owner argued that (1) Petitioner’s request is premature because Patent Owner has not filed its response to the Petition, (2) Petitioner has not shown some of the requested documents are relevant and discoverable to the instant proceeding, and (3) Petitioner’s request may exceed permissible discovery if it includes all exhibits attached to the depositions of Ms. Wang and Mr. Drobinski.

The Board determined that the depositions of Ms. Wang and Mr. Drobinski are relevant and discoverable because they are asserted by Patent Owner in its Preliminary Response as being relevant to secondary indicia of non-obviousness. According to the Board, Patent Owner had stated during a conference that the production of the deposition documents for Ms. Wang and Mr. Drobinski would not be burdensome. Further, because a protective order was entered in this case, any confidential information contained in these papers will be protected subject to the procedures therefor. Thus, the Board concluded that production of the depositions of Mr. Wang and Mr. Drobinski are in the interests of justice along with the sales data submitted by Patent Owner.

The Board was not persuaded that Petitioner had shown, beyond mere speculation or possibility, that the requests for production of transcripts of other testimony of Ms. Wang and Mr. Drobinksi in other proceedings that involve the ’919 patent would yield useful information. Thus, the Board denied Petitioner’s request for those documents.


Paper 24: Decision on Petitioner’s Motion for Authorization to Compel Production

Dated: September 28, 2015

Patents: RE43,919

Before: James P. Calve, Jeremy M. Plenzler, and James A. Worth

Written by: Calve