Patent Owner’s motion for additional discovery of (1) all documents and things considered by Petitioner’s expert in connection with the preparation of his declaration; (2) prior art known to Petitioner and all documents and things reviewed by Petitioner in connection with the preparation of the petition to institute the covered business method patent review; and (3) documents and things related to licensing and commercial implementation of the claimed invention was granted in-part and denied in-part.
In a covered business method patent review, additional discovery may be granted upon a showing of “good cause,” as opposed to “necessary in the interest of justice” which is the standard in an inter partes review. Nevertheless, the Board looks to the same factors to determine whether to grant the motion for additional discovery, namely: (1) whether the requesting party has produced evidence that shows beyond speculation that something useful will be uncovered; (2) whether the request is for litigation positions and the underlying basis for the positions; (3) whether the requested information can be reasonably figured out by the requesting party without additional discovery; (4) whether the questions posed in the discovery request are easy to understand; (5) whether the requests are not overly burdensome to answer.
With respect to the documents and things considered by the expert in the preparation of his declaration, the Board granted the motion for additional discovery, but only to those documents and things which the expert recalled reviewing while preparing his declaration. With respect to the other two categories of requested documents, the Board denied Patent Owner’s motion.download case