Requests For Additional Discovery Governed By Garmin Factors

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