Garmin Int’l, Inc., et al. v. Cuozzo Speed Technologies LLC; Idle Free Systems, Inc. v. Bergstrom, Inc.

The Patent Trial and Appeal Board (Board) recently designated as “informative” two decisions earlier released from concluded inter partes review (IPR) proceedings, Garmin Int’l, Inc., et al. v. Cuozzo Speed Technologies LLC, Case IPR2012-00001 (slip op. March 5, 2013) (Lee, APJ), and Idle Free Systems, Inc. v. Bergstrom, Inc., Case IPR2012-00027 (slip op. June 11, 2013) (Lee, APJ). The two newly designated opinions explain the requirements for motions to amend claims and for additional discovery.

In Idle Free Systems v. Bergstrom, (IP Update, Vol. 17, No. 1) the Board spelled out the requirements for a motion to amend challenged claims: a patent owner is required to confer with the Board prior to filing a motion to amend; a challenged claim can be replaced by only one claim, absent special circumstances, and a motion to amend should identify which challenged claim the proposed claim is to replace; a proposed claim must be responsive to an alleged ground of unpatentability and must include or narrow each feature of the claim being replaced; a substitute claim cannot enlarge the scope of challenged claim by eliminating any feature; a proposed substitute claim cannot introduce new matter; and the patent owner must show written description support in the original disclosure for the proposed substitute claim.

For each proposed substitute claim, the patent owner should make a showing of patentable distinction over the prior art and should identify the feature(s) added to each substitute claims, compared to the challenged claim it replaces, and present technical facts and reason about such feature(s), including construction of new claim terms, sufficient to persuade the Board that the proposed substitute claim is patentable over the prior art of record and over prior art not of record but known to patent owner.

Finally, a patent owner should include the contingency of substituting a claim only upon the unpatentability of the original claim.

In Garmin Int’l, v. Cuozzo Speed Technologies (IP Update, Vol. 16, No. 12), the Board explained what constitutes “routine” discovery and what additional discovery may be permissible for IPRs. The Board pointed to the Office Patent Trial Practice Guide, which explains that routine discovery includes production of any exhibit cited in a paper or in testimony with the citing paper or testimony, the cross-examination of the other side’s declarant(s) and relevant information that is inconsistent with a position advanced during the proceeding.  The standard for granting any requests for additional discovery is whether the additional discovery is in “the interest of justice.” The Board spelled out five factors that are used to determine whether a request meets the standard: the requestor of  information should already be in possession of a threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be uncovered—“useful” meaning “favorable in substantive value to a contention of the party moving for discovery”; asking for the other side’s litigation positions and the underlying basis for those positions is not in the interest of justice; the ability of the requesting part to generate the requested information without need of discovery; question should be easily understandable; and requests should not be overly burdensome, financially, on human resources, and on meeting the statutory time schedule for inter partes review.  The Board ultimately denied all facets of Cuozzo’s discovery motion as not complying with the first enumerated factor.

Practice Note: Patent owners desiring to recast many claims in a patent may want to consider following the PTAB’s advice by filing for either a reissue application or a request for ex parte reexamination of a patent relying on the Board’s institution of an IPR as raising the required substantial new question of unpatentability.  Any party seeking additional discovery in IPR proceedings should tailor their requests narrowly to comply with the five-factor test used for the “interest of justice” standard.