Permobil Inc. v. Pridemobility Products Corp.  

Addressing a patent owner’s motion to compel a petitioner to produce documents concerning petitioner’s alleged copying in an inter partes review (IPR), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB, or the Board) sided with petitioner and denied the motion, finding that the patent owner had not shown that the requested discovery was inconsistent with any of petitioner’s positions.  Permobil Inc. v. Pridemobility Products Corp., Case No. IPR2013-00407 (PTAB, July 2, 2014) (McNamara, APJ).

The IPR concerns a patent directed to an anti-tip system for improving the stability of a powered wheelchair having a drive wheel assembly, an arm rotatably mounted to the drive wheel assembly and an anti-tip wheel coupled to the arm.  One key limitation of the claims at issue, which was added to overcome the prior art, was that the arm pivot axis should sit below an imaginary line connecting the drive wheel axis and anti-tip wheel axis.  In its motion to compel, the patent owner sought from petitioner “all evidence of copying of the wheelchair embodying Patent Owner’s claims under review.”

The patent owner sought relief under both types of permissible PTO discovery:  routine and additional.  “Routine discovery” is limited to, among other things, information inconsistent with a position the party advanced in the proceeding.  “Additional discovery” is discovery that is “necessary in the interests of justice” and requires the party seeking discovery to show that it is in possession of evidence tending to show “beyond speculation” that something useful will be uncovered by the requested discovery.

Under the “routine discovery” prong of its argument, the patent owner alleged that it had collected proof of petitioner’s copying and that this copying was inconsistent with the statement of petitioner’s expert that moving the pivot position downward—which reduced wheelchair stability that a designer would need to account for—was a routine and obvious modification of the prior art.  The Board did not agree, explaining that the testimony of petitioner’s expert regarding stability was not inconsistent with a position taken by petitioner and that any perceived inconsistency with the expert’s testimony was a matter of witness credibility.

Under the “additional discovery” prong, the patent owner alleged that petitioner’s admissions by its CEO of disassembling competitor wheelchairs in the normal course of business tended to show beyond speculation that something useful would be discovered through the patent owner’s requested discovery.  The Board rejected this argument and held that petitioner was not in possession of the required threshold amount of evidence.  While the Board acknowledged that petitioner had conceded that it “obtains the product of multiple competitors, looks at them, and drives them,” the Board noted that petitioner did not testify that it ever disassembled any of patent owner’s wheelchairs.  Accordingly, the patent owner had not shown proof of usefulness “beyond speculation.”