Garmin v. Cuozzo (IPR2012-00001, Paper 26): The Five Additional Discovery Factors

Discovery in an inter partes review is narrow by design. The leading statement of how narrow is Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, Paper 26, entered March 5, 2013, in the first IPR ever filed. The Board designated this decision precedential. Designations can change, so readers should check the USPTO’s current list of precedential and informative decisions.

Paper 26 is one of several papers from this proceeding. Separate notes cover the institution decision (Paper 15) and the motion-to-seal decisions (Paper 34 and Paper 36). For a practical guide to using the factors, see applying the Garmin factors.

Background

After trial was instituted, patent owner Cuozzo sought discovery from petitioner Garmin, mostly to support secondary considerations of nonobviousness: commercial success, copying, failure of others and long-felt need. At a conference call on February 14, 2013, the Board described five factors it considers important, and Cuozzo then trimmed its requests to nine interrogatories, ten document requests and shorter instructions. It also sought a deposition of a Garmin representative modeled on Fed. R. Civ. P. 30(b)(6).

What the Board decided

Routine discovery is narrow. Cuozzo labeled all its requests “routine discovery.” The Board disagreed. The duty to serve exhibits cited in a paper did not reach the file histories of prior art patents Garmin had not relied on, which Cuozzo could get itself from the USPTO. The duty to serve information inconsistent with a party’s position covers specific information the responding party knows to be inconsistent, not broad categories in which the requester hopes to find something. (The decision’s text cites these provisions as ”§ 41.51(b)(1)”; the routine discovery rule for AIA trials is 37 C.F.R. § 42.51(b)(1).)

Additional discovery requires more. Under 35 U.S.C. § 316(a)(5) and 37 C.F.R. § 42.51(b)(2), the moving party must show the discovery is in the interest of justice. Drawing on legislative history and the one-year deadline in § 316(a)(11), the Board stressed that IPR discovery is far more limited than in district court. It then applied five factors:

1. More than a possibility and mere allegation. The requester should already have evidence tending to show, beyond speculation, that something useful will be found. “Useful” means favorable in substance to the requester’s contention, not merely relevant or admissible.
2. Litigation positions and underlying basis. Asking for the other side’s positions and their basis is not in the interest of justice; the Board’s rules set when each side presents its case.
3. Ability to generate equivalent information by other means. Information a party can reasonably assemble itself should not be demanded from the opponent.
4. Easily understandable instructions. Long, complex instructions undercut accurate answers.
5. Requests not overly burdensome. Financial, staffing and schedule burdens count; requests should be tailored to a genuine need.

Factor 1 sank most requests. Cuozzo offered no threshold evidence that Garmin copied, tried and failed, recognized a long-felt need, or earned a premium because of the claimed feature. On commercial success, it showed no nexus: Garmin’s navigation devices had many other features, and the claims did not even require navigation. The inventor’s declaration recounting a call with a Garmin lawyer showed at most a non-infringement opinion, not copying; arguable infringement alone is not copying. An interrogatory about Garmin’s privies did not explain why the answer would be useful.

The other factors confirmed the result. A request for documents Garmin intended to rely on at trial sought litigation positions (Factor 2). Cuozzo could run its own market survey or analysis of the art (Factor 3). The shortened instructions passed (Factor 4). Garmin’s estimate of $52,500 to $82,500 to respond, and a request for every document considered in answering interrogatories, showed undue burden (Factor 5). The Board did not find Cuozzo’s request untimely. The proposed deposition shared the defects of the written requests.

The motion was denied in full. Each party was ordered to confirm within five days that it had complied with its routine discovery obligations.

Why it matters

The five factors became the standard framework for additional discovery motions in IPR and are widely called the “Garmin factors.” The Board relied on Paper 26 within days in Microsoft v. Proxyconn, and later Trial Practice Guide editions discuss the factors. The decision also shows how the IPR standard differs from post-grant review, where 37 C.F.R. § 42.224 uses a good-cause standard; see discovery in PGR versus IPR.

Later developments

The proceeding later reached the Supreme Court in Cuozzo Speed Technologies, LLC v. Lee (2016), on claim construction and the reviewability of institution, not on discovery. Paper 26 itself remains the Board’s reference point for additional discovery; check current USPTO guidance for how the factors are applied today.

Key takeaways

• Routine discovery under § 42.51(b)(1) is limited to specific items, not broad categories.
• Additional discovery in IPR must be “necessary in the interest of justice,” judged by the five Garmin factors.
• The requester needs evidence, beyond speculation, that the discovery will turn up something favorable to its position.
• Secondary-considerations discovery fails without a threshold showing of nexus or copying.