IPR2019-00578, No. 44 Order - Granting Patent Owners Motion for Additional Discovery37 CFR sec 4251b2 (P.T.A.B. Oct. 4, 2019)

Trials@uspto.gov
`571-272-7822
`
`Paper No. 44
`Entered: October 4, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ASSOCIATED BRITISH FOODS PLC, AB VISTA, INC.,
`PGP INTERNATIONAL, INC., ABITEC CORPORATION,
`AB ENZYMES, INC., and AB ENZYMES GMBH,
`Petitioners,
`
`v.
`
`CORNELL RESEARCH FOUNDATION, INC.,
`Patent Owner.
`_______________
`
`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
` Case IPR2019-00582 (Patent 6,451,572 B1)1
`_______________
`
`
`
`Before SUSAN L. C. MITCHELL, ROBERT A. POLLOCK,
`TIMOTHY G. MAJORS, and CYNTHIA M. HARDMAN,
`Administrative Patent Judges.2
`
`PER CURIAM.
`
`1 This Order addresses issues in each of the identified proceedings. We
`exercise our discretion to issue one Order to be filed in each proceeding.
`The parties are not authorized to use this style heading in subsequent papers.
`2 This is not a decision by an expanded panel of the Board. Judges Mitchell,
`Pollock, and Majors are paneled in IPR2019-00577, IPR2019-00578,
`IPR2019-00579, and IPR2019-00580. Judges Mitchell, Pollock, and,
`Hardman are paneled in IPR2019-00581 and IPR2019-00582.
`
`

`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
`Case IPR2019-00582 (Patent 6,451,572 B1)
`
`
`ORDER
`Granting Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`Pursuant to our authorization (Paper 37), Patent Owner Cornell
`Research Foundation, Inc. filed a motion for additional discovery (Paper 38,
`“Mot.”), and Petitioners filed an opposition (Paper 43, “Opp.”).3
`Patent Owner seeks additional discovery pertaining to purported
`objective evidence of non-obviousness. Specifically, Patent Owner requests:
`1. Production of a copy of the Huvepharma final infringement
`contentions served in the District Court Litigation,4 along with the
`documents expressly cited therein; and to the extent not cited in
`Huvepharma’s final infringement contentions, Exhibits A to G in
`Huvepharma’s brief in support of its August 2, 2019 motion for
`leave to file a first amended complaint; and
`2. Documents sufficient to show, for each Subject Product,5 annual
`worldwide sales from the date of first sale of each product to the
`present. Patent Owner notes that it “would accept Petitioners’
`prior interrogatory answer on sales, along with additional sales
`data in a sales summary chart to address any sales for any Subject
`Products not addressed in that interrogatory response.”
`
`
`3 We cite to the documents filed in IPR2019-00577 only. Similar papers are
`part of the record in the other five proceedings.
`4 “District Court Litigation” refers to Huvepharma et al. v. Associated
`British Foods, plc et al., C.A. No. 18-129 (D. Del. 2018). Mot. 1.
`Huvepharma is Patent Owner’s licensee. Id.
`5 “Subject Products” refers to phytase products sold under Petitioners’
`Quantum® and Quantum® Blue product lines. See Mot. App. A at 2–3.
`
`2
`
`

`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
`Case IPR2019-00582 (Patent 6,451,572 B1)
`
`Mot. 2. Patent Owner asserts that the “requested discovery is needed to
`establish certain objective evidence of non-obviousness, particularly the
`commercial success of Petitioners’ Subject Products and potentially
`copying.” Mot. 1.
`
`ANALYSIS
`“The test for a party seeking additional discovery in an inter partes
`review is a strict one.” Symantec Corp. v. Finjan, Inc., IPR2015-01545,
`Paper 9 at 4 (PTAB Dec. 11, 2015). “The moving party must show that such
`additional discovery is in the interests of justice.” 37 C.F.R.
`§ 42.51(b)(2)(i)(2018). Among the factors important to this analysis is
`whether the requesting party can show more than “[t]he mere possibility of
`finding something useful, and mere allegation that something useful will be
`found.” Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001,
`Paper 26 at 6 (PTAB Mar. 5, 2013) (precedential). “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.” Id. The requesting party should already
`possess “evidence tending to show beyond speculation that in fact something
`useful will be uncovered.” Id. We also consider whether the requested
`discovery seeks the other party’s litigation positions or the basis for those
`positions; seeks information that reasonably can be generated without the
`discovery requests; is easily understandable; and whether the requests are
`overly burdensome to answer. Id. at 6–7.
`
`3
`
`

`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
`Case IPR2019-00582 (Patent 6,451,572 B1)
`
`
`As the moving party, Patent Owner bears the burden of proving that it
`is entitled to the requested relief. 37 C.F.R. §§ 42.20(c)(2018) and
`42.51(b)(2)(i)(2018). To meet its burden, Patent Owner must explain with
`specificity the discovery requested and why the items corresponding to each
`request are in the interests of justice.
`Having considered the parties’ respective arguments, we grant Patent
`Owner’s motion. We review each of the Garmin factors in turn below that
`inform our decision.
`
`Factor 1 – There must be more than a possibility and mere allegation that
`something useful will be discovered.
`Pursuant to factor 1, we consider whether Patent Owner is already in
`possession of a threshold amount of evidence or reasoning tending to show
`beyond speculation that something useful will be uncovered via the
`requested discovery. Garmin, IPR2012-00001, Paper 26, at 7. “Useful” in
`this context does not mean merely “relevant” and/or “admissible.” Id.
`Rather, it means favorable in substantive value to a contention of the party
`moving for discovery. Id.
`We begin with Patent Owner’s argument that the requested discovery
`will show “the commercial success of Petitioners’ Subject Products.”
`Mot. 1. To demonstrate nonobviousness based on commercial success, a
`patent owner must provide evidence of both commercial success and a nexus
`between that success and the merits of the claimed invention. Ormco Corp.
`v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006).
`
`4
`
`

`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
`Case IPR2019-00582 (Patent 6,451,572 B1)
`
`
`As to commercial success, Patent Owner asserts that based on various
`public documents that mention, inter alia, strong sales growth and
`increasing market penetration for Petitioners’ Quantum® and Quantum®
`Blue product lines, Petitioners’ products are commercially successful.
`Mot. 3–4. Petitioners respond that Patent Owner has not explained how
`Petitioners’ sales, if considered, would support commercial success. Opp. 5.
`We determine that Patent Owner has provided sufficient evidence and
`reasoning tending to show beyond speculation that the requested sales
`information about Quantum® and Quantum® Blue products will be useful to
`Patent Owner’s allegations of commercial success. Commercial success
`typically is shown with evidence of “significant sales in a relevant market.”
`Ormco Corp., 463 F.3d at 1312 (citation omitted). On this record, the
`evidence cited by Patent Owner suggests that the Quantum® and Quantum®
`Blue product lines have seen year-over-year sales growth and market share
`growth, and that this growth has helped Petitioner AB Vista “climb[] to
`second in global phytase rankings.” Ex. 2035; see also Exs. 2032–2034,
`2036; Mot. 3–4.
`As to nexus, Patent Owner contends that the Subject Products are
`“coextensive” with the claims of the patents challenged in the IPRs, and thus
`argues that “there is a presumed nexus between those products’ commercial
`success and the claimed inventions.” Mot. 4–5 (citing Exs. 2037–42 (claim
`charts)). Petitioners respond that nexus should not be presumed because
`“[n]o single product has even been alleged to infringe each of the challenged
`
`5
`
`

`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
`Case IPR2019-00582 (Patent 6,451,572 B1)
`
`claims;” and because the commercial performance of Petitioners’ products is
`due to other factors including their “own, innovative technology and []
`marketing efforts.” Opp. 3–5. Petitioners further argue that Patent Owner
`must provide evidence of nexus between the unique characteristics of the
`claimed invention and Petitioners’ sales, but cannot do so because the
`relevant methods “were taught in the prior art.” Opp. 4–5.
`When “the successful product is the invention disclosed and claimed
`in the patent, it is presumed that the commercial success is due to the
`patented invention.” Ormco Corp., 463 F.3d at 1312 (quoting J.T. Eaton &
`Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997)).
`On the record at this stage, Patent Owner has provided sufficient evidence to
`suggest that all the claim elements of the challenged claims are present in
`one or more of the Subject Products, and we will assess this issue further (as
`needed) upon a more complete record developed through trial. See Exs.
`2037–42. If established at trial, this would entitle Patent Owner to a
`presumption of nexus. Petitioners can, however, attempt to rebut any such
`presumption at trial by presenting evidence that shows that any commercial
`success was due to factors other than the patented invention, such as
`unclaimed features, marketing, or features known in the prior art. See, e.g.,
`Ormco Corp., 463 F.3d at 1312. Petitioners’ present arguments read to us as
`potential rebuttal points on the issue of nexus (should it be established), but
`it is premature on this record to decide the merits of all such points now.
`
`6
`
`

`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
`Case IPR2019-00582 (Patent 6,451,572 B1)
`
`
`Patent Owner also suggested that the requested discovery will
`“potentially” show copying. Mot. 1, 6. Under Federal Circuit
`jurisprudence, “[n]ot every competing product that arguably falls within the
`scope of a patent is evidence of copying; otherwise, ‘every infringement suit
`would automatically confirm the nonobviousness of the patent.’” Wyers v.
`Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (quoting Iron Grip
`Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004)).
`Copying as objective evidence of nonobviousness “requires evidence of
`efforts to replicate a specific product.” Wyers, 616 F.3d at 1246. Here,
`while Patent Owner asserts that the Subject Products fall within the scope of
`the challenged claims (Mot. 4), it has not demonstrated that it already
`possesses evidence tending to show beyond speculation that in fact
`something useful will be uncovered regarding purported copying.
`Accordingly, Patent Owner’s speculation regarding copying forms no basis
`for our decision to grant the requested discovery.
`For the foregoing reasons, the first Garmin factor weighs in favor of
`granting Patent Owner’s Motion for Additional Discovery.
`
`Factor 2 – A party may not seek another’s litigation positions or the
`underlying basis for those positions.
`Patent Owner asserts that “[t]he requested discovery seeks only
`factual information.” Mot. 6. Petitioners respond that “Patent Owner’s
`focus on Petitioners’ products—despite the sale of products licensed under
`the challenged patents—suggests that Patent Owner is attempting to
`impermissibly litigate infringement.” Opp. 6.
`
`7
`
`

`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
`Case IPR2019-00582 (Patent 6,451,572 B1)
`
`
`On this record, we do not perceive that Patent Owner’s requests are
`driven by an impermissible attempt to litigate infringement. Patent Owner
`contends that the requested information is relevant to establishing alleged
`commercial success, and as noted above, identity between the relevant
`products and the challenged patent claims is a component of demonstrating
`commercial success. See Ormco Corp., 463 F.3d at 1311–12. Thus, it is
`reasonable for Patent Owner to request the existing infringement contentions
`to support its effort to show identity between the products and the
`challenged patent claims.
`For the foregoing reason, the second Garmin factor weighs in favor of
`granting Patent Owner’s Motion for Additional Discovery.
`
`Factor 3 – A party should not seek information that reasonably can be
`generated without a discovery request.
`With respect to factor three, Patent Owner asserts that its requests
`“narrowly target non-public information.” Mot. 6. Petitioners do not appear
`to dispute this contention with respect to the requested financial information.
`With respect to the requested technical information, Petitioners assert that
`“Patent Owner fails to explain why it requires a copy of Huvepharma’s final
`infringement contentions (and thousands of pages of supporting documents)
`as compared to those publicly available.” Opp. 6.
`We again note that demonstrating identity between the relevant
`products and the challenged patent claims is a component of demonstrating
`commercial success. See Ormco Corp., 463 F.3d at 1311–12. Although
`Patent Owner contends that the “public information indicates that the
`
`8
`
`

`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
`Case IPR2019-00582 (Patent 6,451,572 B1)
`
`Subject Products are coextensive with the claims of the Cornell patents
`challenged in the ABF IPRs the Subject Products,” it is reasonable to assume
`that the final infringement contentions served in the District Court Litigation
`contain citations to non-public information from Petitioners’ own files that
`could be useful to fill-in gaps in technical details supplied in the public
`information.
`Thus, we determine that the third Garmin factor weighs in favor of
`granting Patent Owner’s motion.
`
`Factor 4 – Instructions and questions should be easily understandable.
`Patent Owner asserts that the instructions associated with its discovery
`requests are “straightforward.” Mot. 6. Petitioners do not dispute this
`assertion. Thus, this factor weighs in favor of granting Patent Owner’s
`motion.
`
`Factor 5 – The discovery requests must not be overly burdensome to answer.
`Patent Owner asserts that “the requested discovery is not overly
`burdensome” because it can be satisfied by consent for access to certain
`information from the District Court Litigation, together with “a sales
`summary chart for any of the requested sales information not in the
`interrogatory answer.” Mot. 6–7. On this record, it appears that Patent
`Owner’s requested discovery largely targets specific documents that Patent
`Owner knows exist, and which have been prepared already and served in the
`District Court Litigation. Accordingly, we do not perceive that the
`discovery requests are overly burdensome to answer.
`
`9
`
`

`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
`Case IPR2019-00582 (Patent 6,451,572 B1)
`
`
`Petitioners argue that the requested financial information is not
`tailored to the respective issue and expiration dates of the subject patents.
`Opp. 7. Petitioners, however, have not cited any legal authority
`demonstrating that only sales occurring during the patent term maybe
`considered when analyzing commercial success.
`Petitioners also assert that the requested financial information “goes
`well beyond the discovery produced in the District Court Litigation, and
`would require Petitioners to retrieve sales information from archived
`databases.” Opp. 7. On this record, Petitioners have not established that it is
`overly burdensome to access the archived databases to obtain whatever
`additional sales information is missing from the existing interrogatory
`response, and the nature and detail of such alleged burden is information
`uniquely in Petitioners’ possession.
` We note that the burden to consider under this Garmin factor includes
`the “burden on meeting the time schedule” of the inter partes review.
`Garmin, IPR2012-00001, Paper 26 at 7. Patent Owner’s assertion that it
`“may not have time to analyze any documents produced, prepare
`declaration(s), and submit its patent owner response by the current October
`31, 2019 deadline” (Mot. 7) weighs against granting this motion. Although
`Patent Owner blames any delay on “Petitioners’ refusal to produce the
`requested documents” (Mot. 7), Patent Owners’ role in the timing of the
`current dispute should not be overlooked. The Board’s scheduling order
`(Paper 26), which issued together with the institution decision, accorded
`
`10
`
`

`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
`Case IPR2019-00582 (Patent 6,451,572 B1)
`
`Patent Owner twelve weeks to prepare its Patent Owner Response. Patent
`Owner waited nearly six weeks after trial was instituted to first raise its
`request for additional discovery with the Board.
`Despite Patent Owner’s expressed concern with respect to meeting the
`existing time schedule, we are granting Patent Owner’s request in large part
`because it seeks specific, defined documents that we understand have
`already been exchanged in the District Court Litigation, the contents of
`which Patent Owner alleges support its commercial success arguments. The
`parties are reminded that they may stipulate to different dates for DUE
`DATES 1 through 3, 5, and 6 in the Scheduling Order (provided the dates
`are no later than DUE DATE 7). Paper 26 at 6. We caution, however, that
`absent extraordinary circumstances, the Board is not inclined to delay the
`schedule to accommodate Patent Owner’s evaluation of the requested
`discovery.
`
`CONCLUSION
`Upon review of the parties’ arguments and supporting evidence in
`view of the Garmin factors, we conclude that it is in the interests of justice
`to grant Patent Owner’s motion for additional discovery.
`
`ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that Patent Owner’s Motion for Additional Discovery is
`granted;
`
`11
`
`

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