PTAB: Discovery Requests Targeting Objective Evidence Of Nonobviousness Denied Under Garmin Framework

The Patent Trial and Appeal Board denied a patent owner's motion for additional discovery of documents—from petitioners, real parties-in-interest, and third parties—because patent owner failed to show that such discovery would support a showing of nonobviousness. In an inter partes review (IPR), under 37 C.F.R. § 42.51(b)(2), absent agreement of the parties, a moving party must establish that additional discovery is justified in the "interests of justice." In making such a determination, the PTAB considers the five factors articulated in Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, IPR 2012-00001, Paper 26 at 6-7 (PTAB Mar. 5, 2013): (1) whether the moving party possesses evidence tending to show beyond speculation that something useful will be uncovered; (2) whether the moving party is requesting the other party's litigation positions and the underlying basis for those positions; (3) whether the moving party has the ability to generate the requested or equivalent