Takeaway: In requesting additional discovery, the moving party must provide a threshold amount of evidence related to what is sought to establish that there is more than a mere possibility that the request would uncover something useful.
In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery. Patent Owner sought additional discovery pertaining to its assertion of objective indications of non-obviousness.
A party seeking discovery beyond what is expressly permitted by rule in an IPR must do so by motion, and must show such additional discovery is “necessary in the interest of justice.” The Board considers various factors to determine whether additional discovery is necessary in the interest of justice, including whether there is more than a possibility and mere allegation of finding something useful and whether the party has the ability to generate equivalent information by other means.
As to Patent Owner’s first discovery request, the Board was not persuaded that Patent Owner had shown, beyond mere speculation or possibility, that its requests would return something useful, because Patent Owner failed to provide threshold evidence tending to show commercial success by merely asserting alleged commercial success without supporting facts or other product sales evidence and without any facts or evidence showing nexus. Similarly, Patent Owner failed to provide any evidence tending to show that any manufacturer may have copied the systems recited in the proposed substitute claims.
As to Patent Owner’s second discovery request, the Board determined that Patent Owner failed to provide any evidence tending to show lost sales or customer dissatisfaction. Instead, the request was merely based on speculation that documents attributing to a lack of disk encryption in one of Petitioner’s appliances might be useful to show that disk encryption was an unobvious and ultimately important source of success at the time Patent Owner made the invention.
As to Patent Owner’s third discovery request, the Board determined that Patent Owner failed to explain sufficiently how laudatory statements about Petitioner’s Data Store encryption functionality would show non-obviousness of the proposed substitute claims. Also, the Board determined that Patent Owner’s argument that a laudatory statement was “communicated elsewhere, in private” was mere speculation based solely on the fact that Petitioner’s website includes laudatory statements.
Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245
Paper 19: Decision on Patent Owner’s Motion for Additional Discovery
Dated: August 22, 2014
Patent 8,392,684 B2
Before: Justin T. Arbes, Hyun J. Jung, and Miriam L. Quinn
Written by: Jung