throbber
Trial@uspto.gov
`571-272-7822
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` Paper No. 26
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` Entered March 5, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GARMIN INTERNATIONAL, INC. ET AL.
`Petitioner
`
`v.
`
`CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
`
`
`Case IPR2012-00001
`Patent 6,778,074
`
`
`Before JAMESON LEE, MICHAEL P. TIERNEY, and JOSIAH C. COCKS,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`DECISION
`On Motion For Additional Discovery
`37 C.F.R. §§ 42.20 and 42.51(b)(2)
`
`INTRODUCTION
`
`
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`The patent owner (“Cuozzo”) has filed a motion for additional discovery.
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`(Paper 21). Petitioner (“Garmin”) has opposed. (Paper 22). Cuozzo has replied.
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`(Paper 25).
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`

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`Case IPR 2012-00001
`Patent 6,778,074
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`
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`Prior to filing of the discovery motion, a conference call was held on
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`February 14, 2013, during which time Cuozzo presented a proposed set of
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`discovery requests and was advised by the Board of five (5) factors which are
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`important in determining what constitutes discovery satisfying the “necessary in
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`the interest of justice” standard under 35 U.S.C. § 316(a)(5). (Paper 20). The
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`Board appreciates the effort expended by Cuozzo in:
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`reducing the number of interrogatories from nineteen to nine;
`
`
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`court litigation deposition of a corporate entity under Fed. R. Civ. P. 30(b)(6) on
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`topics covered by the interrogatories and document requests, for information “that
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`may not be recorded in documents or revealed in interrogatory responses.” (Paper
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`21, 8:14 to 9:2).
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`
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`We have considered every item of the discovery request. In its request,
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`Cuozzo disagrees with the Board’s non-final interpretation of the term “integrally
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`attached” in instituting this inter partes review. For purposes of this decision on
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`Cuozzo’s motion for discovery, we employ Cuozzo’s interpretation, recognizing
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`that all discussions below apply under either our non-final interpretation or
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`Cuozzo’s proposed interpretation and that the outcome would be no different.
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`-2-
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`
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`1.
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`2.
`
`3.
`
`
`4.
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`Cuozzo’s motion also requests what amounts to the equivalent of a district
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`reducing the number of document requests from twenty to ten;
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`shortening instructions for answering interrogatories from nine
`pages in length to two pages; and
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`shortening the instructions for producing documents from eight
`pages to two.
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`

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`Case IPR 2012-00001
`Patent 6,778,074
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`
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`For reasons discussed below, Cuozzo’s motion for additional discovery is
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`denied.
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`A.
`
`Routine Discovery
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`DISCUSSION
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`First, we address Cuozzo’s attempt to label all of its document requests and
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`
`
`
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`interrogatories as “Routine Discovery” under 37 C.F.R. §§ 41.51(b)(1)(i) and
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`41.51(b)(1)(iii). In that regard, it is noted that the Board’s authorization is not
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`required for Cuozzo to conduct routine discovery. Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48756, 48761 (Aug. 14, 2012).
`
`
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`Under 37 C.F.R. § 41.51(b)(1)(i), “[u]nless previously served or otherwise
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`by agreement of the parties, any exhibit cited in a paper or in testimony must be
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`served with the citing paper or testimony.” Under 37 C.F.R. § 41.51(b)(1)(iii),
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`“[u]nless previously served, a party must serve relevant information that is
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`inconsistent with a position advanced by the party during the proceeding
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`concurrent with the filing of the documents or things that contains the
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`inconsistency” [privileged information excepted].
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`
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`Cuozzo construes 37 C.F.R. § 41.51(b)(1)(i) as including the file histories of
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`prior art patents relied on by Garmin in its petition for review. That interpretation
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`is unreasonably broad. It is sufficient that Garmin provides copies of the patents
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`relied on in its petition since Garmin did not rely on the file histories of those
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`patents. Cuozzo may independently obtain the file histories of the cited prior art
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`patents if it so desires, through the Patent Application Information Retrieval
`
`(PAIR) System available on the USPTO Web site (www.uspto.gov/patents/ebc) or
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`other commercial services.
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`Case IPR 2012-00001
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`Cuozzo construes 37 C.F.R. § 41.51(b)(1)(iii) as including discovery
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`requests “tailored to target information inconsistent with positions Garmin has
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`taken in its Petition.” (Paper 21, 7:5-6). The language appears to be in line with
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`the applicable rule by use of narrow terms such as “tailored,” “target,” and
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`“inconsistent with positions Garmin has taken.” In actuality, however, Cuozzo is
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`not referencing information known to Garmin to be inconsistent with positions
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`taken in the petition. Rather, Cuozzo casts a wide net directed to broad classes of
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`information which may not include anything inconsistent with positions taken by
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`Garmin.
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`
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`Routine discovery under 37 C.F.R. § 41.51(b)(1)(iii) is narrowly directed to
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`specific information known to the responding party to be inconsistent with a
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`position advanced by that party in the proceeding, and not broadly directed to any
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`subject area in general within which the requesting party hopes to discover such
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`inconsistent information. Cuozzo’s attempt to label very broad discovery requests
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`as narrowly tailored routine discovery is misplaced.
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`
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`Also, under 37 C.F.R. § 41.51(b)(1)(iii), the time for serving such routinely
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`discoverable inconsistent information is concurrent with the filing of documents or
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`things that contains the inconsistency. Nothing in Cuozzo’s motion persuades us
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`that Garmin has failed to comply with “routine discovery” under 37 C.F.R.
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`§ 41.51(b)(1)(iii), under our construction of the rule provision as discussed above.
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`However, to assist in alleviating any concern, we will in the order section of this
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`decision ask each party to confirm that up to now in this inter partes review it has
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`produced all information covered by 37 C.F.R. § 41.51(b)(1)(iii) as routine
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`-4-
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`discovery.
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`

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`Case IPR 2012-00001
`Patent 6,778,074
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`
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`B. Additional Discovery
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`
`
`Under the Leahy-Smith America Invents Act, discovery is available for the
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`deposition of witnesses submitting affidavits or declarations and for “what is
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`otherwise necessary in the interest of justice.” 35 U.S.C. § 316(a)(5); see also
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`37 C.F.R. § 42.51(b)(2)(“The moving party must show that such additional
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`discovery is in the interests of justice ….”). That is significantly different from the
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`scope of discovery generally available under the Federal Rules of Civil Procedure.
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`
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`Congressional debate for the Leahy-Smith America Invents Act indicates
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`that discovery standards under that legislation for inter partes review are identical
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`to the standards in the original patent reform bill introduced by Senator Kyl in
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`2008. 157 Cong. Rec S1375-76 (daily ed. Mar. 8, 2011). During introduction of
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`the 2008 bill, Senator Kyl commented on the discovery standard for inter partes
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`review, noting that it “restricts additional discovery to particular limited situations,
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`such as minor discovery that PTO finds to be routinely useful, or to discovery that
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`is justified by the special circumstances of the case.” 154 Cong. Rec. S9988 (daily
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`ed. Sept. 27, 2008)(statement of Sen. Kyl). Senator Kyl further commented that
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`“[g]iven the time deadlines imposed on these proceedings, it is anticipated that,
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`regardless of the standards imposed in [sections 316 and 326], PTO will be
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`conservative in its grants of discovery.” Id. at 9988-89.
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`
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`Thus, in inter partes review, discovery is limited as compared to that
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`available in district court litigation. Limited discovery lowers the cost, minimizes
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`the complexity, and shortens the period required for dispute resolution. There is a
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`one-year statutory deadline for completion of inter partes review, subject to
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`Case IPR 2012-00001
`Patent 6,778,074
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`limited exceptions. 35 U.S.C. § 316(a)(11); see also 37 C.F.R. § 42.100(c). What
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`constitutes permissible discovery must be considered with that constraint in mind.
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`
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`The statutory standard is “necessary in the interest of justice.” 35 U.S.C.
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`§ 316(a)(5). We have previously advised Cuozzo, in an order authorizing the filing
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`of a motion for additional discovery, that the following factors are important
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`(Paper 20, 2-3):
`
`1. More Than A Possibility And Mere Allegation -- The mere
`possibility of finding something useful, and mere allegation that
`something useful will be found, are insufficient to demonstrate that
`the requested discovery is necessary in the interest of justice. The
`party requesting discovery should already be in possession of
`evidence tending to show beyond speculation that in fact something
`useful will be uncovered.
`
`Litigation Positions And Underlying Basis -- Asking for the
`2.
`other party’s litigation positions and the underlying basis for those
`positions is not necessary in the interest of justice. The Board has
`established rules for the presentation of arguments and evidence.
`There is a proper time and place for each party to make its
`presentation. A party may not attempt to alter the Board’s trial
`procedures under the pretext of discovery.
`
`Ability To Generate Equivalent Information By Other Means –
`3.
`Information a party can reasonably figure out or assemble without a
`discovery request would not be in the interest of justice to have
`produced by the other party. In that connection, the Board would
`want to know the ability of the requesting party to generate the
`requested information without need of discovery.
`
`Easily Understandable Instructions -- The questions should be
`4.
`easily understandable. For example, ten pages of complex
`instructions for answering questions is prima facie unclear. Such
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`Case IPR 2012-00001
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`instructions are counter-productive and tend to undermine the
`responder’s ability to answer efficiently, accurately, and confidently.
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`Requests Not Overly Burdensome To Answer -- The requests
`5.
`must not be overly burdensome to answer, given the expedited nature
`of Inter Partes Review. The burden includes financial burden, burden
`on human resources, and burden on meeting the time schedule of Inter
`Partes Review. Requests should be sensible and responsibly tailored
`according to a genuine need.
`
`
`Factor (1) – More Than a
`Possibility and Mere Allegation
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`Critically undermining all aspects of the discovery motion is Cuozzo’s
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`
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`misunderstanding of above-identified Factor (1). The essence of Factor (1) is
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`unambiguously expressed by its language, i.e., the requester of information should
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`already be in possession of a threshold amount of evidence or reasoning tending to
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`show beyond speculation that something useful will be uncovered. “Useful” in
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`that context does not mean merely “relevant” and/or “admissible.” In the context
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`of Factor (1), “useful” means favorable in substantive value to a contention of the
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`party moving for discovery. In the conference call held on February 14, 2013, we
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`explained that meaning, in contrast to “relevant” and “admissible” to counsel for
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`each party.
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`
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`In its motion, Cuozzo re-wrote Factor (1) as “Likely to Yield Relevant,
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`Admissible Evidence.” (Paper 21, 9-11). The rewritten factor is incorrect, is very
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`similar to the standard of discovery applicable in district court litigation, and is in
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`sharp contrast to what Factor (1) means. We reiterate that in the context of Factor
`
`(1), “useful” means favorable in substantive value to a contention of the party
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`Case IPR 2012-00001
`Patent 6,778,074
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`moving for discovery. That notion is missing entirely from Cuozzo’s rewritten
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`factor.
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`
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`The vast majority of Cuozzo’s requested items relate to its potential
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`assertion of secondary considerations of nonobviousness such as long-felt but
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`unresolved need, failure of others, commercial success, and copying by others.
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`Yet, conspicuously absent from Cuozzo’s motion is a threshold amount of
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`evidence or reasoning tending to show beyond speculation that the information to
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`be discovered will be “useful” to Cuozzo. For instance, Cuozzo offered no
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`evidence or sufficient reasoning tending to show beyond speculation that Garmin
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`copied Cuozzo’s invention, that Garmin had attempted but failed to develop a
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`device having the features of Cuozzo’s claimed invention, that Garmin achieved
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`commercial success “because of” any inventive feature recited in Cuozzo’s claims
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`under review, or that Garmin recognized that there was a long-felt but unresolved
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`need in the art for a feature implemented by Cuozzo’s claimed invention. Note this
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`language in Factor (1) above: “The mere possibility of finding something useful,
`
`and mere allegation that something useful will be found, are insufficient to
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`demonstrate that the requested discovery is necessary in the interest of justice.”
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`
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`With regard to Cuozzo’s potential assertion of commercial success as a
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`secondary consideration of nonobviousness, there is an insufficient showing of
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`nexus between the claimed invention and Cuozzo’s discovery requests. Cuozzo
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`has not made a sufficient threshold showing that the requested sales and pricing
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`information are for units the sales of which are due to an inventive feature claimed
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`by Cuozzo. Cuozzo has not accounted for the presence of other desirable features
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`implemented on the same units for which sales and pricing information are
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`Case IPR 2012-00001
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`requested. Cuozzo has not even represented that the units for which sales and
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`pricing information are requested do not embody significant and desirable features
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`not recited in Cuozzo’s claims under review. Garmin in its opposition represents
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`that the “speed limit alert feature” is but only one out of numerous features
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`provided in Garmin’s navigational devices. (Paper 22, 12). We note, in particular,
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`that although the claims under review require a global positioning system receiver,
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`none requires that global positioning system receiver to provide assistance in
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`vehicle navigation. Thus, if Garmin’s devices are navigational devices and if
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`navigational assistance is a substantial and desirable feature, Cuozzo’s requests
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`lack critical nexus with its claimed invention. At least Interrogatory Nos. 3-7 and
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`Request for Document Nos. 3, 4, 6, and 8 are adversely affected thereby.
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`
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`With regard to Cuozzo’s potential assertion of failure by others as secondary
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`consideration of nonobviousness, we note that an allegation of failure by others is
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`not evidence of nonobviousness unless it is shown that widespread efforts of
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`skilled workers having knowledge of the prior art had failed to find a solution to
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`the problem. In re Allen, 324 F.2d 993, 997 (CCPA 1963). Any failure by Garmin
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`alone does not establish widespread failure by skilled workers in the art attempting
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`to solve the same problem. Absent in Cuozzo’s motion is a threshold amount of
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`evidence tending to show that any skilled artisan having knowledge of the
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`pertinent prior art had tried but failed to solve a problem related to speed limit alert
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`indication. And even assuming that there are others who have tried but failed to
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`solve a speed limit alert indication problem, Cuozzo has not set forth a threshold
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`amount of evidence tending to show that Garmin itself had also tried but failed to
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`solve that problem. At least Interrogatory No. 9 is adversely affected thereby.
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`
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`Cuozzo speculates that Garmin charged an unusual premium for its
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`navigation units on the basis of the “speed limit alert feature.” (Paper 21, 11).
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`Cuozzo requests information to substantiate that speculation. For instance,
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`Request for Production No. 3 states: “License, settlement, co-development, or
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`technology transfer agreements directly related to the speed limit alert feature.”
`
`Request for Production No. 4 states: “To the extent the speed limit alert feature is
`
`discussed or addressed in them, Agreements between You and any customer,
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`supplier, reseller, or distributor (including JVC Kenwood and Chrysler and
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`excluding End-User License Agreements).” Request for Production No. 6 states:
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`“Market analysis, market projections, projections, or roadmap Documents
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`discussing Your decision to develop and commercialize the speed limit alert
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`feature in Garmin products.” Request for Production No. 8 states: “Documents
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`sufficient to show the incremental commercial value of the speed limit alert feature
`
`included in Garmin’s Personal Navigation Devices . . . .” Interrogatory Nos. 3-5
`
`are similar.
`
`
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`However, Cuozzo has not presented a threshold amount of evidence or
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`reasoning tending to show beyond speculation that Garmin was able to charge or
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`demand a premium in the sense of unusual high price specifically for or on account
`
`of the “speed limit alert feature.”
`
`
`
`Request for Production No. 9 states: “Documents relating to the ‘074 patent,
`
`the inventor Guisseppe [sic] Cuozzo, or discussions YOU had with Mr. Cuozzo
`
`about his invention.” Request for Production No. 10 states: “The file history for
`
`U.S. Patent No. 8,258,878 [Garmin’s own patent on a navigation device], any
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`agreements relating to it, and Documents discussing the ’074 [Cuozzo’s patent
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`Case IPR 2012-00001
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`under review] or Guiseppe [sic] Cuozzo in connection with the ’978 patent.”
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`Interrogatory Nos. 1, 7, and 8 are directed to Garmin’s own technical development
`
`and introduction of a “speed alert/warning feature.”
`
`
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`Presumably, Request for Production Nos. 9 and 10 and Interrogatory Nos. 1,
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`7, and 8 pertain to Cuozzo’s potential assertion of copying by Garmin as a
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`secondary consideration of nonobviousness. However, Cuozzo failed to present a
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`threshold amount of evidence or reasoning tending to show beyond speculation
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`that Garmin copied from Cuozzo. Accompanying the motion is a declaration of
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`Cuozzo’s sole inventor Giuseppe A. Cuozzo. (Ex. 2006). Paragraphs 3 and 4 of
`
`that declaration are reproduced below:
`
`After my patent issued, I contacted Garmin by telephone
`3.
`
`because I noticed Garmin was selling a navigation device with a speed
`limit warning function. I asked to speak to someone in Garmin
`product development and eventually was contacted by a Garmin
`lawyer. I gave the number of my patent to the Garmin representative.
`
`
`
`The Garmin lawyer told me that my claims did not cover
`4.
`Garmin’s navigation devices because, according to the Garmin
`lawyer, my patent covered a system built in to the vehicle and their
`devices did not have a gauge cluster.
`
`The above-quoted testimony establishes, at best, only that a Garmin lawyer
`
`
`
`had evaluated Cuozzo’s patent and determined that Garmin’s devices did not
`
`infringe. It does not even establish that Garmin was aware of Cuozzo’s patent
`
`prior to making its navigation devices having a “speed limit alert feature.” Even
`
`assuming infringement of Cuozzo’s claims under review by Garmin’s devices,
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`Case IPR 2012-00001
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`which is a matter we do not determine, that is not evidence of copying. Garmin
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`might well have independently conceived of and developed the invention.
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`
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`Under Federal Circuit jurisprudence, not every competing product that
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`arguably falls within the scope of a patent is evidence of copying, because
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`otherwise every infringement suit would automatically confirm the
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`nonobviousness of the patent. Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir.
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`2010); Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir.
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`2004). Copying as objective evidence of nonobviousness requires evidence of
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`effort to replicate a specific product. Wyers, 616 F.3d at 1246; Iron Grip Barbell
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`Co., 392 F.3d at 1325. As we have stated above, Cuozzo failed to present a
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`threshold amount of evidence or reasoning tending to show beyond speculation
`
`that Garmin copied from Cuozzo.
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`
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`With regard to Cuozzo’s potential assertion of long-felt but unresolved need
`
`as secondary consideration of nonobviousness, Cuozzo has not set forth a threshold
`
`amount of evidence or reasoning tending to show that Garmin recognized that
`
`there had been a long-felt but unresolved need with regard to a speed limit alert
`
`indicator. At least Interrogatory Nos. 1, 2, 5, and 7-9, and Request for Document
`
`Nos. 3, 4, and 6 are adversely affected thereby.
`
`
`
`On page 1 of the motion, Cuozzo states generally that it seeks to discover the
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`identity of Garmin’s privies. In that regard, Interrogatory No. 6 states: “If any
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`non-Garmin entity owns or has an interest in the speed limit alert technology or
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`intellectual property, please identify the entities and Describe their respective
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`interest.” The motion does not explain for what purpose Cuozzo seeks the identity
`
`of Garmin’s privies and a description of their respective interests. It is thus
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`unknown in what manner Cuozzo expects the answer to the interrogatory to be
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`“useful” in this review. During the telephone conference conducted on February
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`14, 2013, we already advised counsel for Cuozzo that the Federal Rules of Civil
`
`Procedure do not apply in inter parte review and that Cuozzo must apply the rules
`
`for inter partes review regarding joinder of another party including a privy.
`
`Factor (2) -- Litigation
`Positions and Underlying Basis
`
`Consideration of Factor (2) weighs against granting Cuozzo’s Request for
`
`
`
`Production No. 5, which reads: “Documents You intend to rely upon at trial or
`
`have provided or intend to provide to an expert witness or declarant.” In
`
`Factor (2), we indicate that asking for the other party’s litigation positions and the
`
`underlying basis for those positions is not necessary in the interest of justice. Also
`
`in Factor (2), we indicate that the Board has established rules for the presentation
`
`of arguments and evidence and that there is a proper time and place for each party
`
`to make its presentation, and that a party may not attempt to alter the Board’s trial
`
`procedures under the pretext of discovery. If and when Garmin presents affidavit
`
`or declaration testimony to support any position it maintains, Cuozzo has an
`
`opportunity to cross-examine the affiant or declarant with regard to the basis of the
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`testimony. Garmin is not obligated to keep Cuozzo informed of its positions on
`
`substantive issues before Garmin is ready to present them in this review.
`
`Factor (3) -- Ability to Generate
`Equivalent Information by Other Means
`
`With regard to Cuozzo’s potential assertion of long-felt but unresolved need
`
`
`
`as secondary consideration of nonobviousness, and whether Garmin charged an
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`unusual premium for the “speed limit alert feature,” the discovery requests also fail
`
`Factor (3) – Ability to Generate Equivalent Information by Other Means. Cuozzo
`
`has not adequately explained why it needs Garmin’s views to establish what
`
`Cuozzo believes had been a long-felt but unresolved need with regard to speed
`
`limit indicators. Cuozzo can rely on its own analysis of the state of the art or on
`
`the opinions of independent analysts. With regard to the price differential between
`
`Garmin products with and without the “speed limit alert feature,” Cuozzo can
`
`conduct its own market survey and make its own comparison. Further applying
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`Factor (3), we note that Garmin need not produce the file histories of prior art
`
`references relied upon by Garmin in its petition, which is the subject of Request for
`
`Production No. 7, or the file history for Patent 8,258,978, which is the subject of
`
`Request for Production No. 10.
`
`Factor (4) – Easily Understandable Instructions
`
`
`
`Factor (4) concerns easily understandable instructions. We have considered
`
`the two-page instructions for interrogatories and the two-page instructions for
`
`document requests and conclude that the instructions are easily understandable.
`
`Factor (5) – Not
`Overly Burdensome to Answer
`
`
`
`In Factor (5), we consider whether the requests are overly burdensome to
`
`answer, given the one-year statutory deadline for inter partes review. The burden
`
`includes financial burden, burden on human resources, and burden on meeting the
`
`time schedule of this review. Requests should be sensible and responsibly tailored
`
`according to a genuine need.
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`As is explained with sufficient specificity in Garmin’s opposition,
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`compliance with the discovery request (except for production of several file
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`histories) requires a very significant expenditure of human and financial resources.
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`Even if Garmin suspects that no document meets a particular request, it is legally
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`obligated to make a diligent search for information. The opposition notes that
`
`Garmin has millions of pages of engineering documents that potentially have to be
`
`searched to determine if any contain a reference to the “speed limit alert feature.”
`
`The opposition also notes that responding to Interrogatories 3 and 4 will likely
`
`require 20-30 hours of time to compute the information on a product-by-product
`
`basis because of the manner in which Garmin maintains its financial data. (Paper
`
`22, 8).
`
`
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`Garmin’s estimate is that responding to the document requests could require
`
`approximately 75-125 labor hours and cost $22,500-$37,500 dollars, that
`
`responding to the interrogatories could require approximately 50-75 labor hours
`
`and cost $15,00[0]-$22,500 dollars, and that the cost of producing one or more
`
`persons to testify at a deposition could require approximately 50-75 labor hours
`
`and cost $15,000-$22,500 dollars. (Id. at 8-9). The total cost estimate is $52,500 to
`
`$82,500.
`
`
`
`The burden imposed on all parties for meeting the time schedule of this inter
`
`partes review is also a consideration under Factor (5). Garmin filed its petition on
`
`September 16, 2012. Cuozzo waived its right to file a preliminary response. We
`
`instituted review on January 9, 2013. Cuozzo first requested authorization to file a
`
`-15-
`
`
`
`

`
`Case IPR 2012-00001
`Patent 6,778,074
`
`motion for discovery on February 14, 2013. We cannot conclude on these facts
`
`that Cuozzo unduly delayed its request for additional discovery.
`
`
`
`In considering whether the requests are responsibly tailored according to a
`
`genuine need under Factor (5), however, we identify Document Request No. 1 as
`
`failing in that regard. It reads as follows: “Documents and Things You considered
`
`in preparing Your responses to patent owner’s Interrogatories.” The undue breadth
`
`of such a request is self-evident. It suffices to say only that the documents and
`
`things need not contain anything useful or even relevant. The more thoughtful and
`
`diligent the respondent is in answering the interrogatories by considering the
`
`“potential” relevance of more items, the more items need to be produced regardless
`
`of usefulness and relevance. There is no valid reason for such an all-encompassing
`
`demand.
`
`The Request for Deposition in the
`Manner of Fed R. Civ. P. 30(b)(6)
`
`
`
`Cuozzo requests deposing a representative of Garmin under Fed. R. Civ. P
`
`30(b)(6), on many of the same topics addressed by its Interrogatory Nos. 1-9 and
`
`request for Documents 1-10. Thus, all of the problems and deficiencies discussed
`
`above with respect to interrogatories and document production requests equally
`
`apply to the deposition request where the subject areas overlap.
`
`CONCLUSION
`
`
`
`For reasons discussed above, we conclude that Cuozzo’s motion has not met
`
`the “necessary in the interest of justice” standard for any one of the requested items
`
`of discovery in its proposed Interrogatory Nos. 1-9, proposed Request for
`
`-16-
`
`
`
`

`
`Case IPR 2012-00001
`Patent 6,778,074
`
`Document Production Nos. 1-10, and proposed deposition of a Garmin
`
`representative pursuant to Federal Rule of Civil Procedure 30(b)(6).
`
`It is
`
`ORDER
`
`
`
`
`
`ORDERED that Cuozzo’s motion for additional discovery is denied; and
`
`FURTHER ORDERED that each party shall, within five days of the date
`
`of this communication file a paper to confirm whether it has, up to March 4, 2013,
`
`complied with the requirements of routine discovery under 37 C.F.R
`
`§ 41.51(b)(1)(iii).
`
`
`
`
`
`-17-
`
`
`
`

`
`-18-
`
`Case IPR 2012-00001
`Patent 6,778,074
`
`For PETITIONER
`
`Jennifer C. Bailey
`HOVEY WILLIAMS LLP
`jcb@hoveywilliams.com
`
`Scott Brown
`HOVEY WILLIAMS LLP
`jcrawford@hoveywilliams.com
`
`
`
`For PATENT OWNER
`
`John R. Kasha
`Kasha Law LLC
`john.kasha@kashalaw.com
`
`Kelley Kasha
`Kasha Law LLC
`Kelley.kasha@kashalaw.com

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