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ARTICLE · 12 JUNE 2017

Unmet Garmin Factor 3 Proves Fatal For Additional Discovery Request

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In light of ample notice and unsubstantiated assertions, the Board denied the request.

United StatesIntellectual Property
Matthew Johnson
Matthew Johnson
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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.

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