CASE SUMMARY:
DISCOVERY OF TEST RESULTS, LAB NOTEBOOKS, ETC.
On Jun 21, 2012
Patent Owner’s motion for additional discovery of was granted in-part and denied in-part. Additional discovery is permitted in an inter partes review proceeding where “necessary in the interest of justice.” The Board determines whether that standard has been met by looking to five factors: (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; and (5) whether the requests are not overly burdensome to answer.
The Board found that Patent Owner had met the requisite standard with respect to the requested laboratory notebooks and other documents relating to the creation and testing of prior art compositions, especially in light of the fact that Petitioner did not present any argument that factors 2-4 had not been met. Notably, however, Patent Owner argued that this information should have been produced as part of routine discovery. The Board disagreed; pointing out that mere reference to experiments in a paper does not require that all underlying data and lab notebooks be produced with that paper.
With respect to the requested test samples and any testing results inconsistent with Petitioner’s asserted position in their petition, the Board denied Patent Owner’s request. The Board found that Patent Owner had not shown that it could not create the identified samples themselves, and did not explain why they could not gather the information they seek from the laboratory notebooks. With respect to the inconsistent positions, the Board found that Patent Owner had not demonstrated why this information is necessary and why it would not be unduly burdensome to Petitioner to produce.
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