By Emily Lamm and Matt Johnson
In Polygroup Ltd. v. Willis Electric Co., Ltd., the Patent Trial and Appeal Board denied a Patent Owner request for documents already provided in a co-pending lawsuit but restricted from use by a protective order. IPR2016-01610, Paper 54 at 8, (May 16, 2017). In part, this decision stemmed from the Board’s assessment of the Garmin Factors for additional discovery articulated in Garmin Int’l Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26, 6-7 (PTAB Mar. 5, 2013). Those balancing factors are: (1) the request is more than a possibility and mere allegation with regard to the likelihood of useful discovery; (2) the request does not merely seek the opposing party’s litigation positions and corresponding basis underlying those positions; (3) there is not an ability to obtain or generate equivalent information by alternative means; (4) the instructions are easily understandable; and (5) the request is not overly burdensome to answer.
One of the overarching purposes of the America Invents Act was to provide an efficient alternative to litigation. Pub. L. No. 112-29, 125 Stat. 284 (2011). Consequently, additional discovery is available only “in the interest of justice,” and the Board generally seeks to limit additional discovery requests within inter partes review. 35 U.S.C. § 316(a)(5). While a denied request for additional discovery is not especially unusual or surprising, the documents at issue in Polygroup had already been produced by the Petitioner in the co-pending district court litigation and identified by Bates numbers. Thus, the sole barrier preventing the Board from considering them was the District Court’s protective order, which is a procedural formality that the Board could bypass with relative ease (i.e., by ordering the materials to also be produced in the PTAB matter).
Nevertheless, the Board emphasized the weight of the protective order, and found Garmin factor 3 “dispositive.” Indeed, there would be no need for the request if the Patent Owner had simply asked the District Court for permission. The Patent Owner acknowledged that either (a) formal motion to gain permission to use the documents within inter partes review; or (b) altering the confidentiality designations of the materials would constitute “other means” of acquiring the documents under Garmin factor 3. In addition, the Patent Owner’s assertion that “timeliness and expense” made seeking modification of the protective order by the District Court unfeasible fell short. The Board was unconvinced by these “vague and conclusory” assertions because the Patent Owner had “been aware for at least five months of the need to seek relief from the District Court protective order.” In light of ample notice and unsubstantiated assertions, the Board denied the request.
This denial indicates that the Board is particularly unwilling to circumvent a District Court’s protective order when a party has ample notice and awareness of alternative ways to obtain the requested documents. Furthermore, a Board may find that a single Garmin factor is dispositive, and deny an additional discovery request on that basis alone. Thus, at each stage of litigation, parties should seek proactive actions, and not simply hope for the Board to provide relief available elsewhere.