In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery. Patent Owner sought additional discovery pertaining to its assertion of commercial success and copying as secondary considerations of nonobviousness. Specifically, Patent Owner requested documents from January 1, 2012 to the present identifying the total annual sales for certain Whirlpool part numbers, and from May 21, 2009 through August 1, 2012, all documents including any version of specific Whirlpool drawing numbers.
The Board stated that while discovery is available in an inter partes review, it is limited in order to allow the review to be a quick and cost effective alternative to litigation. Therefore, any party seeking additional discovery beyond what is permitted by statute must show that such discovery is “necessary in the interest of justice.” 35 U.S.C. § 316(a)(5); 37 C.F.R. § 42.51(b)(2)(i). In determining whether the discovery meets this standard, the Board considers various factors: (1) whether there is more than a mere possibility that something useful will be found; (2) the ability to generate equivalent information by other means; and (3) the burden to answer the requests.
The Board concluded that Patent Owner’s first request did not demonstrate that the information is necessary in the interest of justice because Patent Owner did not provide threshold evidence to show (1) sales allegedly amounting to commercial success or (2) a nexus between the claimed invention and any commercial success of Petitioner’s products. Patent Owner’s only evidence of significant sales in the market was from one of its own employees that since 2010 Patent Owner has experienced a growth in sales and market share due to its patented technology, but did not provide evidence that its sales would be considered significant in the relevant market. To show nexus, Patent Owner provided a declaration from another of its employees stating that he had inspected one of the products and found that it met the limitation of at least claim 3 of the ’561 Patent. However, Patent Owner did not provide evidence of a nexus between the claimed invention and the Petitioner’s product with respect to Petitioner’s sales. Patent Owner also provided the declaration of one of Whirlpool’s former employees stating that he believes that Patent Owner’s design was the reason that Whirlpool bought shelves from Patent Owner, but the Board found this was not relevant to Whirlpool’s reasons for buying from Petitioner. Further, Patent Owner did not address its ability to generate the information without discovery. Patent Owner provided evidence of Petitioner’s actual sales from an account manager at Whirlpool and possessed royalty reports from Whirlpool showing purchases of shelves from Petitioner. Thus, it failed to demonstrate that the “discovery requests cannot be fulfilled by other means.”
Regarding Patent Owner’s second request, the Board found that the request is unduly broad and would be overly burdensome to answer because it seeks “all Gemtron documents or communications, internal or external.” Patent Owner provided unsupported testimony that such documents could be obtained through a keyword search in one system. The Board found that it would likely have to be found in an email search, which would be unduly burdensome.
Schott Gemtron Corp. v. SSW Holding Co., Inc., IPR2014-00367
Paper 20: Decision on Patent Owner’s Motion for Additional Discovery
Dated: August 13, 2014
Patent: 8,286,561 B2
Before: Justin T. Arbes, Philip J. Hoffmann, and Georgianna W. Braden
Written by: Braden