Seoul Semiconductor Co., Ltd., et al. v. Enplas Corp.

Addressing the issue of whether a patent owner’s motion for additional discovery was justified based on a newly-filed exhibit, the Patent Trial and Appeal Board (PTAB or Board) denied the request for failing to demonstrate the need for additional discovery in view of the Garmin factors.  Seoul Semiconductor Co., Ltd., et al. v. Enplas Corp., IPR2014-00605 (PTAB, Nov. 5, 2014) (Arpin, APJ).

The Board had previously granted the patent owner’s request for additional discovery with respect to specific portions of an expert declaration directed to a “hand-drawn tracing analysis and [. . .] computer simulation”.  However, without the authorization of the Board, the patent owner filed a new exhibit and requested additional discovery from the petitioner with respect to the new exhibit rather than the exhibit on which the Board had previously granted additional discovery.  The Board had previously cautioned the patent owner about filing unauthorized motions, denied the patent owner’s request for additional discovery on the new exhibit and ordered the exhibit expunged.  The Board further cautioned the parties that any future unauthorized motions shall be subject to sanctions.

With respect to the original exhibit, the Board applied the factors set forth in Garmin v. Cuozzo Speed Tech (IP Update, Vol. 17, No. 9; IP Update, Vol. 16, No. 12) in determining whether the additional discovery was needed to satisfy the interests of justice.  In doing so, the Board considered several of the Garmin factors.  The first Garmin factor requires that the party requesting discovery should already be in possession of evidence showing, beyond mere speculation, that something useful will be uncovered by the discovery requests.  Here, the patent owner had only established the “mere possibility” that something useful would be found, which was not enough.

The next factor considered, the third Garmin factor, provides that it is not in the interest of justice to require a party to produce information the other party can reasonably figure out or assemble on its own without additional discovery of the opposite party.  The Board concluded that the experts’ declaration disclosed all of the information necessary for the patent owner to figure out or assemble the information being sought without additional discovery and that the patent owner had failed to show that the information provided in the declaration was incomplete or inaccurate.

Finally, the Board applied the fifth Garmin factor, which provides that any additional discovery should be “sensible and responsibly tailored according to a genuine need.”  The Board determined the patent owner’s additional discovery requests seeking “any and all experiments and work . . . , or any similar documents referring to [Parkyn] . . .” was too broad and overly burdensome and was not properly tailored to demonstrate the need for additional discovery.