Garmin Int’l, Inc. v. Cuozzo Speed Techs LLC


IPR2012-00001, Paper No. 26, March 5, 2013

U.S. Patent no. 6,778,074

FACTS

This PTAB Decision lays out the 5 Garmin factors for granting/denying additional discovery.

Petitioner Cuozzo requested additional discovery in the form of interrogatories, requests for production, and a proposed deposition of patent owner Garmin’s representative. Under 35 U.S.C. § 316(a)(5), discovery is generally available for “what is otherwise necessary in the interest of justice.” This statutory standard weighs the following factors:

  1. More than a Possibility and Mere Allegation
  2. Litigation Positions and Underlying Basis
  3. Ability to Generate Equivalent Information By Other Means
  4. Easily Understandable Instructions
  5. Requests Not Overly Burdensome To Answer

HOLDING

The Board held that, with the exception of factor 4, Cuozzo’s additional discovery requests weighed against it when considering the rest of the factors. In particular, the vast majority of items requested by Cuozzo related to its potential assertion of secondary considerations of nonobviousness such as long-felt but unresolved need, failure of others, commercial success, and copying by others. Cuozzo failed to demonstrate that additional discovery requests would prove useful to it beyond mere speculation and thus failed to meet the “necessary in the interest of justice” standard for any of the requested items of discovery.

TAKEAWAY


By weighing specific factors for what constitutes permissible discovery in inter partes review, the Board remains strong in its desire to limit discovery unless absolutely required. The Board touts the advantages of limited discovery in its opinion, stating that it “lowers the cost, minimizes the complexity, and shortens the period required for dispute resolution.” The Board believes that limited discovery is a necessity to be able to complete inter partes review within the one year statutory deadline under 35 U.S.C. § 316(a)(11).  

Anytime you request or fight against a request for additional discovery, the five Garmin factors should be discussed in your motion/opposition.

 

To view full Decision click here.