Speculative IPR Discovery Request Not in the Interest of Justice

By Lisa Furby and Jim Twieg –

“Because Congress intended inter partes reviews to serve as a faster and more cost-effective alternative to litigating validity in district courts, discovery in inter partes reviews is limited.” See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 5 (PTAB Mar. 5, 2013). As such, motions for additional discovery are denied when the movant fails to shows the requested discovery is  “necessary in the interest of justice.” Cisco Systems, Inc. v. InfoExpress Inc., Paper 23 at 11 (PTAB Dec. 20, 2024).

In Cisco Systems, InfoExpress sought to challenge the Petitioner’s claim of obviousness under § 103 by showing that the Petitioner had copied the patented software features in its own software. Id. at 5. Key to InfoExpress’s claim was a certification process Cisco conducted in 2005 and 2006, whereby Cisco engineers had access to an evaluation copy of InfoExpress’s software and were charged with testing its functionality. Id. at 7. To further its non-obviousness claim, InfoExpress sought additional discovery to determine “what exactly Cisco did with the information concerning” InfoExpress’s product that it received nearly 20 years ago. Id. at 5–6.

In order to give effect to Congress’s intent for IPRs to be more efficient proceedings, the PTAB considers five factors when evaluating whether additional discovery is “necessary in the interest of justice.” Garmin at 6–7. The so-called Garmin factors are (1) whether the discovery request establishes more than a possibility and mere allegation, (2) whether the request seeks the adversary’s litigation positions and underlying basis, (3) whether the information sought may be generated by other means, (4) whether the request is easily understandable, and (5) whether the request is overly burdensome to answer. Id.

In weighing the Garmin factors, the PTAB focused heavily on the first and fifth factors. To determine whether the request established more than a possibility of finding something useful, the PTAB explained that InfoExpress had not alleged any specific wrongdoing on Cisco’s part—it could not explain how Cisco had misused the evaluation software it had been provided—but rather had only alleged general misconduct that somehow led to copying its technology. Id. at 8. This highly speculative theory was strongly outweighed by evidence already in the record showing that Cisco had considered similar features years earlier. Id. In assessing whether the additional discovery would be overly burdensome to Cisco, the PTAB emphasized the age of the information sought, noting that “simply identifying people who have relevant information, let alone subsequently collecting, organizing, and reporting that information” would be time-consuming. Id. at 10.

While the other three factors favored granting the motion, the PTAB deemed them to be outweighed by the speculative and burdensome natures of the discovery request. Id. at 11. Since “the Garmin factors as a whole do not indicate that the proposed additional discovery is ‘necessary in the interest of justice’“ the PTAB denied the Patent Owner’s motion. Id.

Takeaway: When evaluating whether additional discovery is in the interests of justice, the PTAB continues to focus  on the likelihood of finding useful information and the burden imposed on the other party. Particularly when seeking older information or otherwise burdensome discovery, the moving party must provide more than a merely speculative explanation of what it aims to uncover.