By Carl Kukkonen –
The PTAB in a recent PGR proceeding: SWM International, LLC et al v. DynaEnergetics Europe GmbH (PGR2021-00097), reiterated the requirements for additional discovery. In particular, in this matter, the petitioner, having access to excerpts from certain depositions from a different proceeding involving different patents, sought the complete deposition transcripts with exhibits believing they provided relevant prior art information.
The Board reiterated that in post-grant reviews, “[t]he moving party has the burden of proof to establish that it is entitled to the requested relief.” See 37 C.F.R. § 42.20(b) (2021). To conduct additional discovery in a post grant review, a requesting party must show “good cause as to why the discovery is needed.” 37 C.F.R. § 42.224(a). Additional discovery in post grant review “is limited to evidence directly related to factual assertions advanced by either party in the proceeding.” 37 C.F.R. § 42.224(b); 37 C.F.R. § 42.51(b)(2)(i).
In assessing whether this standard has been met, the Board considered the five factors provided in the Board’s precedential decision in Bloomberg, Inc. v. MarketsAlert Pty. Ltd., CBM2013-00005, Paper 32 (May 29, 2013) (“Bloomberg, Paper 32”),
Under Bloomberg factor 1, “[a] good cause showing requires the moving party to provide a specific factual reason for expecting reasonably that the discovery will be ‘useful.’” Bloomberg, Paper 32 at 5. “Useful” in this context means “favorable in substantive value to a contention of the party moving for discovery.” Id. For this analysis, “[t]he mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient to establish a good cause showing.” Id.
The Board found that factor 1 was met by the petitioner providing sufficient specificity in that the requested documents will be useful in that they potentially have relevant characteristics of the prior art.
Under Bloomberg factor 2, the requests were analyzed to assess whether the requests seek the other party’s litigation positions and the underlying basis for those positions. Id. (“Asking for the other party’s litigation positions and the underlying basis for those positions is insufficient to demonstrate that the additional discovery is necessary for good cause.”).
The Board found that factor 2 was met by petitioner adequately explaining why the depositions of the fact witnesses would not reveal litigation positions.
Under Bloomberg factor 3, the Board assessed whether the moving party has the ability to generate by other means information equivalent to that sought. Id. (“A party should not seek information that reasonably can be generated without a discovery request.”).
The Board found that factor 3 was met because the record did not support that other information available to the petitioner was truly equivalent to the contents of the deposition transcripts.
Under Bloomberg factor 4, the Board assessed whether the moving party provided easily understandable instructions. Id.
The Board found that factor 4 was met because the petitioner was clear in its request for the documents and the patent owner did not seek clarification following an email from the Board listing documents to be produced.
And under Bloomberg factor 5, the Board determined whether the requests are overly burdensome to answer. Id. (“The burden includes financial burden, burden on human resources, and burden on meeting the time schedule of the trial.”).
The Board found that factor 5 was met because the patent owner had not adequately explained why producing documents already in its possession would impact the overall schedule of this proceeding. The Board also found that the protective order in place also favored a finding that factor 5 was met.
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