Bloomberg Inc. v. Markets-Alert Pty Ltd.
CBM2013-00005, Paper No. 32, May 29, 2013
Patent No. 7,941,357
(Motion for Additional Discovery in part granted and lower standard for CBM)
Patent owner Markets-Alert filed a motion seeking additional discovery production of information considered by a declarant, prior art and information considered by petitioner Bloomberg, and information related to licensing and commercial implementation.
The Board stated that the “good cause” standard in granting additional discovery in covered business method patent reviews is slightly lower than that of the “interest(s) of justice” standard employed in inter partes reviews. The five factors employed in this determination were slightly modified from the Garmin standard:
- More than a possibility and mere allegation
- Litigation positions and underlying basis
- Ability to generate equivalent information by other means
- Easily understandable instructions
- Requests not overly burdensome to answer
While the Board granted Markets-Alert’s request to seek production of information considered by a declarant since it was narrowly tailored and sufficiently supported with good cause, the Board denied Markets-Alert’s requests with respect to all other additional discovery production. The Board deemed the requests concerning prior art and licensing and commercial implementation as being highly speculative, not narrowly tailored, and not proven to produce anything meaningful. Markets-Alert also failed to satisfy its burden of explaining why it was unable to obtain the information on its own or why it was unable to rely on its own or existing analysis without a discovery request.
Additional discovery is easier to get in a CBM over an IPR. However, the discovery request should be narrowly tailored. And though the Board is willing to grant additional discovery provided the party seeking information is able to satisfy its burden of proof under a heightened standard, the Board strongly adopts the policy to limit discovery in administrative trial proceedings in the interest of “an efficient, streamlined, and cost-effective alternative to district court litigation.”
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