Corning v. DSM (IPR2013-00043, Paper 27): Additional Discovery of Laboratory Notebooks

Some inter partes review petitions rely on experiments rather than documents alone, for example to show that a prior art composition inherently has a claimed property. Corning Inc. v. DSM IP Assets B.V., IPR2013-00043, Paper 27 (entered June 21, 2013), addresses what the patent owner can obtain about those experiments.

Background

Corning’s petition argued that DSM’s claimed coating compositions were unpatentable because prior art compositions inherently had the claimed properties. To prove it, Corning’s expert prepared several compositions described in the prior art and tested them. DSM moved for discovery of:

1. laboratory notebooks and other documents showing the protocols for making and testing the compositions, and the underlying data;
2. samples of the compositions Corning prepared; and
3. test results inconsistent with Corning’s inherency position, with a privilege log for anything withheld.

What the Board decided

Not routine discovery. DSM argued that because the petition and declarations described the experiments, everything behind them had to be served as routine discovery under 37 C.F.R. § 42.51(b)(1)(i), which requires service of exhibits cited in a paper or testimony. The Board called that reading overbroad: a reference to experiments does not by itself require production of all underlying data and notebooks. It treated the requests as additional discovery under § 42.51(b)(2), which must be “necessary in the interest of justice” (35 U.S.C. § 316(a)(5)).

Notebooks granted. Applying the factors from Garmin v. Cuozzo, the Board found the first factor met. The details of how the compositions were made and tested were useful in themselves, because Corning’s expert relied on them to prove unpatentability, and DSM explained that the declarations left out information needed to confirm that the compositions matched the prior art and that the tests were reliable. Corning did not seriously contest the other factors, and its counsel did not claim prejudice when asked about burden. The Board ordered production within about a week.

Samples denied. DSM said some compositions took weeks to make, but it did not say which ones, how much of each it needed, or why cross-examination and the notebooks would not give it what it needed. Corning had only small amounts left after destructive testing. DSM had not shown the request was necessary in the interest of justice.

Inconsistent results and privilege log denied. Information inconsistent with a party’s position is routine discovery under § 42.51(b)(1)(iii), and Corning confirmed it had produced all of it. DSM gave no reason beyond speculation for a privilege log and did not address burden.

Why it matters

The decision draws a practical line. A party that relies on its own testing puts the methods and data at issue, and the opposing party has a strong claim to see them. That does not make every related item routine discovery, and requests for physical materials or broad logs still need specific justification. The decision also fits the Board’s evidence rules: expert testimony that does not disclose underlying facts or data may be given little weight (37 C.F.R. § 42.65(a)). See evidentiary considerations in PTAB trials and discovery in post-grant review vs. inter partes review.

A petitioner planning to rely on new testing should expect to produce how the tests were done and what they showed, and may consider serving that material with the petition.

Key takeaways

• Describing experiments in a petition does not make all underlying lab records routine discovery.
• Notebooks and data behind an expert’s tests were ordered produced as additional discovery in the interest of justice.
• A request for physical samples failed for lack of specifics on need, quantity and burden.
• Inconsistent information must already be produced as routine discovery under § 42.51(b)(1)(iii).