In its Order, the Board granted Patent Owner’s Motion for Leave to File a Motion to Seal and Petitioner’s Motion for Leave to File a Motion for Additional Discovery.
Regarding the Motion for Leave to File a Motion to Seal, during the depositions of two of Patent Owner’s declarants, Patent Owner indicated that certain portions of the transcript should be designated as confidential prior to filing the transcripts. The parties could not agree on the course of action. The Board stated that the party intending for the document to be sealed must file a motion to seal with a proposed protective order. The Board cautioned that along with the motion to seal, Patent Owner must file for each transcript a confidential unredacted version under seal and a non-confidential redacted version for the public. The motion to seal must also explain the basis for every redaction made to the deposition transcripts. The Board also encouraged the parties to adopt the default protective order and stated that if the parties ask for additional protections, the motion should identify why those protections are warranted.
Regarding the Motion for Leave to File a Motion for Additional Discovery, Petitioner was seeking additional discovery of a document that one of Patent Owner’s declarants relied upon in formulating “projections” relating to the secondary consideration of commercial success. The Board granted the motion allowing for additional briefing, but cautioned that Petitioner must explain why discovery of the document is necessary in the interests of justice and directed the parties to review Garmin Int’l, Inc. v. Cuozzo Speed Techs., LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013) for guidance regarding motions for additional discovery.
Schott Gemtron Corp. v. SSW Holding Co., Inc., IPR 2013-00358
Paper 57: Order on Conduct of the Proceeding
Dated: April 21, 2014
Patent 8,286,561 B2
Before: Justin T. Arbes, Georgianna W. Braden, and Miriam L. Quinn
Written by: Arbes