Marvell Semiconductor, Inc. v. Intellectual Ventures I
LLC
After briefing on the Garmin factors to determine if
additional discovery was "necessary in the interest of
justice" during an inter partes review (IPR), the
Patent Trial and Appeal Board (PTAB or Board) granted the patent
owner's motion to compel discovery regarding whether the
primary reference was "commonly owned" by the patent
owner. Marvell Semiconductor, Inc. v. Intellectual
Ventures I LLC, Case IPR2014-00552 (PTAB, Feb. 18, 2015)
(Giannetti, APJ).
The IPR was instituted on the grounds that the petitioner was
likely to prevail in showing that the primary reference rendered
the patent owner's claims obvious under § 103(a).
The patent owner later motioned to compel testimony and production
of evidence from a third-party company and two third-party
inventors, hoping to establish that the primary reference was
"commonly owned" by a patent owner and thereby
disqualified as prior art under § 103(c).
