Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC

After briefing on the Garmin factors to determine if additional discovery was “necessary in the interest of justice” during an inter partesreview (IPR), the Patent Trial and Appeal Board (PTAB or Board) granted the patent owner’s motion to compel discovery regarding whether the primary reference was “commonly owned” by the patent owner.  Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, Case IPR2014-00552 (PTAB, Feb. 18, 2015) (Giannetti, APJ).

The IPR was instituted on the grounds that the petitioner was likely to prevail in showing that the primary reference rendered the patent owner’s claims obvious under § 103(a).  The patent owner later motioned to compel testimony and production of evidence from a third-party company and two third-party inventors, hoping to establish that the primary reference was “commonly owned” by a patent owner and thereby disqualified as prior art under § 103(c).

The petitioner objected to the motion, arguing that the patent owner did not satisfy the Garmin factors.  First, the petitioner argued that the patent owner had the ability to access the information through other means:  a related, ongoing lawsuit in which the patent owner already deposed the third parties.  Next, the petitioner argued that the patent owner was unable to uncover useful evidence from the third parties in the lawsuit and that the patent owner had not established “beyond speculation that in fact something useful will be uncovered” by yet another attempt.  Finally, the petitioner argued that the patent owner’s request was overly burdensome because it was not narrowly tailored.

Nevertheless, the PTAB ultimately sided with the patent owner because despite multiple requests, the third party company refused to cooperate and stated that “it would prefer to have a subpoena issued so that [it] can maintain a neutral status.”  Further, although useful evidence may be produced by the third-party company in the related, ongoing lawsuit, a protective order was in place in the lawsuit, and the patent owner may not be permitted access to discovered information.

Therefore, the PTAB determined that the parties should seek a proper, narrowly tailored subpoena from a district court.