Denying Motion for Leave to File Motion for Additional Discovery CBM2013-00037, 38

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Takeaway: The Garmin factors regarding the need for additional discovery are also applicable to CBM reviews, but may be modified to reflect the lower good-cause standard applied in CBM reviews.

In its Order, the Board denied Patent Owner’s Motion for Leave to File a Motion for Additional Discovery. Specifically, Patent Owner requested documents concerning alleged copying by Petitioner of a commercial product released by Patent Owner’s predecessor-in-interest and commercial success of Petitioner’s product alleged to infringe the patents at issue. These documents are subject to a district court protective order that precludes their use in this proceeding and Petitioner declined to waive its claim that the documents are subject to the provisions of the protective order.
The Board stated the factors set out in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26, regarding evaluating requests for additional discovery also apply to covered business method patent reviews, but are modified to reflect the slightly lower good-cause standard applied in covered business method patent reviews. In denying the request, the Board focused on the Garmin factor regarding the ability to generate equivalent information sought by the request for additional discovery by other means. Patent Owner acknowledged that it has made no effort to seek modification of the protective order so the documents can be used in the proceeding, and it became clear that equivalent marketing and sales information related to the technology of the patents at issue can reasonably be generated by Patent Owner on its own.

Search America, Inc. v. Transunion Intelligence, LLC, CBM2013-00037; CBM2013-00038
Paper 24: Order on Authorization for Motion for Additional Discovery
Dated: April 28, 2014
Patents 7,333,937; 8,185,408
Before: Thomas L. Giannetti and Patrick M. Boucher
Written by: Boucher