PTAB Applies Narrow Standards in Granting First Additional Discovery

In two related inter partes review (IPR) proceedings, both titled Corning Inc. v. DSM IP Assets B.V. (IPR2013-00043 and IPR2013-00046), the Board granted—for the first time—requests for additional discovery. Rather than illustrating loosening of discovery standards, however, these decisions confirm the limited scope of additional discovery available in IPR proceedings.

Applying the factors for additional discovery outlined in Garmin v. Cuozzo (IPR2012-00001), the Board granted DSM’s request for laboratory notebooks, underlying data, and experimental protocols for testing performed by Corning’s expert. The Board found the materials sought by DSM “per se useful” because “Corning has proffered the expert testimony . . . to demonstrate the unpatentability of DSM’s claims.” After finding that the other Garmin factors were met, the Board granted DSM’s request for these materials.

But the Board denied DSM’s other requests for additional discovery. The Board found that DSM had not “narrowly tailored” its request for samples of the prior-art compounds tested by Corning’s expert. In particular, DSM sought all of Corning’s samples, not just those that were difficult to make, and had not asked for specific quantities of each sample. DSM also failed to demonstrate that the request was not unduly burdensome or that it could not obtain the information through other means. Thus, DSM failed to make the showings required by Garmin, and the Board denied discovery of the samples.

The Board also denied DSM’s request for any test results inconsistent with Corning’s invalidity position because this information was “routine discovery” under Section 42.51(b)(1). Corning had already completed routine discovery, so the Board declined to order additional production. The Board also decided Corning did not have to provide a privilege log because DSM had not explained why a log would provide “useful information” and would not be “unduly burdensome.”

These decisions highlight the Board’s narrow reading of what types of additional discovery are “necessary in the interests of justice.” Garmin encourages parties moving for additional discovery to narrowly tailor their requests and to demonstrate that the requested information would be useful. The Corning decisions illustrate that these standards can be met, but continue to be strictly applied.