Corning Inc. v. DSM IP Assets B.V.


IPR2013-00043, Paper No. 27

Patent No. 7,171,103 B2

[When the “interests of justice” standard for additional discovery is met and not met]

FACTS

Petitioner Corning had an expert who prepared several compositions disclosed in prior art (to show inherent properties) that it asserted against the patent in suit.  Patent owner DSM filed a motion for discovery requesting (1) laboratory notebooks, (2) samples, and (3) any inconsistent test results concerning the synthesized compositions.

HOLDING

The Board granted DSM’s request for (1) additional discovery with respect to the laboratory notebooks, as it outlined details of the procedures used to synthesize compositions relied upon by Corning via its expert testimony to demonstrate the unpatentability of DSM’s claims. The request meet the “interests of justice” standard for additional discovery.

The Board denied DSM’s requests for additional discovery with respect to (2) samples and (3) inconsistent test results. The Board concluded that the request for samples were not narrowly tailored and thus would likely unduly burden Corning. The Board also held that the request for inconsistent test results failed to meet the standard of “necessary in the interest of justice,” because it was speculative and would also likely unduly burden Corning. Also, DSM asserted this was “routine discovery”, but the Board stated this interpretation of routine discovery was overbroad.¬† (Paper No. 27, page 3.)

TAKEAWAY

The Board, in its interest to limit discovery in administrative judicial proceedings, adheres strictly to the five factors for granting additional discovery. If the party seeking information is unable to narrowly tailor its request and unable to explain why the outcome would be meaningful, then the Board will not hesitate to deny the request as not satisfying the “interest(s) of justice” standard.

 

To view full Decision click here.