In its Order, the Board authorized Patent Owner to file a motion for additional discovery, and for Petition to file an opposition to that motion, with both papers being limited to five pages. No reply was authorized.
Patent Owner had sought authorization to file a motion for additional discovery of (1) documents identifying Petitioner’s total monthly sales to Whirlpool Corporation and/or NIS, Inc. for each of 47 different Whirlpool part numbers; and (2) documents or communications referencing any version of four specific Whirlpool drawing numbers. Patent Owner had sought these materials in connection with potential secondary considerations of obviousness (namely, commercial success and copying) arguments that it was considering making. Petition opposed both of these requests.
As for category (1), Patent Owner asserted that it had evidence that both parties to the instant proceeding supply the identified parts to Whirlpool that are within the scope of the challenged claims, and that Petitioner’s sales to Whirlpool were substantial. Patent Owner had made a similar request that had been denied in IPR2013-00358 involving the ’561 Patent, but alleged that in the instant proceeding, Patent Owner’s request was narrower. Nonetheless, Patent Owner acknowledged during a teleconference with the Board and Petitioner that its additional discovery request could be narrowed even further. Petitioner, in response, argued that Patent Owner’s request was broader than the one in IPR2013-00358, that it was based only on speculation in certain key respects, and that the requested sales figures could be calculated from sources already in Patent Owner’s possession.
In regard to category (2), Patent Owner argued that it has evidence “that the four identified parts are copies of what Patent Owner provided to Whirlpool, and that it could submit a witness declaration regarding the relevant facts,” Petitioner maintained that Patent Owner’s request was speculative and unduly burdensome at least to the extent it encompassed documents merely “referring to” the four drawing numbers, and Patent Owner again acknowledged that its request could be narrowed further.
The Board determined that a motion for additional discovery under 37 C.F.R. § 42.51(b)(2) was warranted in view of the scope of Patent Owner’s requests and the evidence that Patent Owner had presented. Citing to Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001 (PTAB Mar. 5, 2013)(Paper 26), the Board indicated that Patent Owner’s motion should specifically identify what materials are being requested, provide a narrower definition for at least category (2), and explain why Patent Owner believes the requested discovery is “necessary in the interest of justice” in accordance with 35 U.S.C. § 316(a)(5); 37 C.F.R. § 42.51(b)(2).
Schott Gemtron Corporation v. SSW Holding Company, Inc., IPR2014-00367
Paper 13: Order on Conduct of the Proceeding
Dated: July 22, 2014
Patent: 8,286,561 B2
Before: Justin T. Arbes, Philip J. Hoffmann, and Georgianna W. Braden
Written by: Arbes
Related Proceeding: IPR2013-00358