Trials@uspto.gov
`571.272.7822
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`
`
`
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` Paper No. 33
`
` Entered: December 30, 2019
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KOLBE & KOLBE MILLWORK CO., INC.,
`Petitioner,
`
`v.
`
`SIERRA PACIFIC INDUSTRIES,
`Patent Owner.
`____________
`
`Case IPR2019-00933
`Patent 8,561,365 B2
`____________
`
`
`
`Before CARL M. DEFRANCO, TIMOTHY J. GOODSON, and
`RYAN H. FLAX, Administrative Patent Judges.
`
`FLAX, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
` Paper No. 33
`
` Entered: December 30, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KOLBE & KOLBE MILLWORK CO., INC.,
`Petitioner,
`
`v.
`
`SIERRA PACIFIC INDUSTRIES,
`Patent Owner.
`____________
`
`Case IPR2019-00933
`Patent 8,561,365 B2
`____________
`
`
`
`Before CARL M. DEFRANCO, TIMOTHY J. GOODSON, and
`RYAN H. FLAX, Administrative Patent Judges.
`
`FLAX, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`
`
`
`IPR2019-00933
`Patent 8,561,365 B2
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`I.
`
`INTRODUCTION
`On December 12, 2019, Patent Owner filed an authorized Motion for
`Additional Discovery. Paper 26 (“PO Mot.”). On December 20, 2019,
`Petitioner filed an authorized Opposition to this Motion (corrected). Paper
`31 (“Pet. Opp.”). For the reasons discussed below, Patent Owner’s Motion
`is granted.
`As described in our Trial Practice Guide, in trials before the Board,
`“[d]iscovery is a tool to develop a fair record and to aid the Board in
`assessing the credibility of witnesses” and “discovery before the Board is
`focused on what the parties reasonably need to respond to the grounds raised
`by an opponent.” See Office Patent Trial Practice Guide, 84 Fed. Reg.
`64,280, § I.F (Nov. 21, 2019) (“Trial Practice Guide”). By rule, such
`discovery is divided into routine and additional discovery, the former
`category requiring production of a party’s cited exhibits, cross-examination
`of witnesses, and if not previously served, evidence relevant to information
`inconsistent with a position advanced by the producing party during the
`proceeding. 37 C.F.R. § 42.51(b)(1). The latter category, additional
`discovery, is directed to non-routine discovery that should be allowed in the
`interests of justice. Id. § 42.51(b)(2); see also 35 U.S.C. § 316(a)(5).
`We conclude the additional discovery sought by Patent Owner should
`be authorized in the interests of justice, as discussed below. Regarding the
`authorization of additional discovery, the Board set forth factors for
`consideration in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-
`00001, Paper 26 at 6–7 (PTAB Mar. 5, 2013) (precedential), which are:
`Factor 1: Whether there is more than a possibility and mere
`allegation that something useful will be found and whether the
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`party requesting discovery is already in possession of evidence
`tending to show beyond speculation that something useful will
`be discovered;
`Factor 2: Whether the party requesting discovery is seeking its
`opponent’s litigation positions and underlying basis for those
`positions;
`Factor 3: Whether the party requesting discovery has the
`ability to generate equivalent information by other means;
`Factor 4: Whether the party requesting discovery has presented
`easily understandable instructions and questions; and
`Factor 5: Whether the request for discovery is overly
`burdensome to answer or sensible and reasonably tailored
`according to a genuine need.
`II. DISCUSSION
`Patent Owner seeks additional discovery concerning evidence relating
`to objective indicia of non-obviousness, specifically on the issues of copying
`and commercial success, in the form of the production of three (3)
`documents and associated metadata identified by Bates labeling, the
`production of documents regarding Petitioner’s revenue and sales of four (4)
`specified accused-infringing products,1 responses to twenty six (26) requests
`for admission regarding the authenticity and admissibility of the requested
`documents and related metadata, and a response to one (1) interrogatory
`regarding an explanation for any response to the requests for
`admission/denial that is less than an unqualified admission. See Ex. 2019;
`
`
`1 Patent Owner defines the “Accused Products” to be the following products,
`sold since 2013: VistaLuxe® Casement Window – Accent Style;
`VistaLuxe® Casement Window – Flush Style; VistaLuxe® Awning
`Window – Accent Style; and VistaLuxe® Awning Window – Flush Style.
`Ex. 2019, 2–3.
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`Ex. 2020; Ex. 2021. This evidence is also at issue in the U.S. District Court
`case Sierra Pacific Industries v. Kolbe & Kolbe Millwork Co., Inc., Civil
`Action No. 18-cv-853 (W.D. Wis.) (herein referred to as the “related district
`court litigation”), which the parties have each identified as a related matter.
`Paper 1 at 109; Paper 4 at 2. The related district court litigation was stayed
`on October 18, 2019, by order of the court. Ex. 2024.
`Patent Owner’s proposed discovery requests are reproduced below:
`Requests for Production of Documents
`
`RFP No. 1:
`The documents and associated metadata produced by
`Kolbe as: KOLBE_0028207-KOLBE_0028208,
`KOLBE_003792, KOLBE_0003802.xlsx, and
`KOLBE_0002997-KOLBE_0003039.
`RFP No. 2:
`Documents sufficient to show Petitioner’s gross and net
`revenue derived from sales of the Accused Products, as well as
`sales in units (as such unit sales may be tracked in the ordinary
`course of business), by year, throughout the entire period during
`it has been sold, up to and including the most recent date such
`information is available.
`RFP NO. 3:
`For each Request for Admission that Petitioner has not
`provided an unqualified admission, any and all documents
`Petitioner claims support its bases to deny said Request for
`Admission.
`
`Requests for Admissions
`REQUEST FOR ADMISSION No. 1: Admit that document
`KOLBE_0003802.xlsx is a true and authentic copy of the
`genuine original document.
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`REQUEST FOR ADMISSION No. 2: Admit that document
`KOLBE_0003802.xlsx was made at or near March-April 2012
`as indicated as created and last modified dates in the metadata.
`REQUEST FOR ADMISSION No. 3: Admit that document
`KOLBE_0003802.xlsx was made at or near the time of the
`regularly conducted activity to which the document pertains.
`REQUEST FOR ADMISSION No. 4: Admit that document
`KOLBE_0003802.xlsx was made by a person or persons
`employed by or engaged by Kolbe as part of their duties as a
`Kolbe employee or their engagement by Kolbe.
`REQUEST FOR ADMISSION No. 5: Admit that document
`KOLBE_0003802.xlsx was prepared and kept in the course of
`Kolbe’s regularly conducted business activity.
`REQUEST FOR ADMISSION No. 6: Admit that all
`foundational requirements for the admission of document
`KOLBE 0003802.xlsx have been satisfied.
`REQUEST FOR ADMISSION No. 7: Admit that document
`KOLBE_0002997–KOLBE_0003039 (as redacted) is a true and
`authentic copy of the genuine original document.
`REQUEST FOR ADMISSION No. 8: Admit that document
`KOLBE_0002997–KOLBE_ 0003039 (as redacted) was made
`at or near the date on page 2 of the document, January 27, 2012.
`REQUEST FOR ADMISSION No. 9: Admit that document
`KOLBE_0002997–KOLBE_0003039 (as redacted) was made
`at or near the time of the regularly conducted activity to which
`the document pertains.
`REQUEST FOR ADMISSION No.10: Admit that document
`KOLBE_0002997–KOLBE_0003039 (as redacted) was made
`by a person or persons employed by or engaged by Kolbe as
`part of their duties as a Kolbe employee or their engagement by
`Kolbe.
`REQUEST FOR ADMISSION No. 11: Admit that document
`KOLBE_0002997–KOLBE_0003039 (as redacted) was
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`prepared and kept in the course of regularly conducted activity
`of Kolbe’s business.
`REQUEST FOR ADMISSION No. 12: Admit that all
`foundational requirements for the admission of document
`KOLBE_0002997–KOLBE_0003039 (as redacted) have been
`satisfied.
`REQUEST FOR ADMISSION No.13: Admit that document
`KOLBE_0028207–KOLBE_0028208 (as redacted) includes a
`true and authentic copy of the genuine original document, an
`email dated April 2, 2012 from Scott Hintz, a Kolbe employee
`at the time of the email.
`REQUEST FOR ADMISSION No. 14: Admit that document
`KOLBE_0028207–KOLBE_0028208 (as redacted) was made
`at or near April 2, 2012, the date of the email as indicated on
`the document.
`REQUEST FOR ADMISSION No.15: Admit that document
`KOLBE_0028207–KOLBE_0028208 (as redacted) was made
`at or near the time of the regularly conducted activity to which
`the document pertains.
`REQUEST FOR ADMISSION No. 16: Admit that document
`KOLBE_0028207–KOLBE_0028208 (as redacted) was made
`by a person or persons employed by or engaged by Kolbe as
`part of their duties as a Kolbe employee or their engagement by
`Kolbe.
`REQUEST FOR ADMISSION No. 17: Admit that document
`KOLBE_0028207–KOLBE_0028208 (as redacted) was
`prepared and kept in the course of regularly conducted activity
`of Kolbe’s business.
`REQUEST FOR ADMISSION No. 18: Admit that all
`foundational requirements for the admission of document
`KOLBE_0028207–KOLBE_0028208 (as redacted) have been
`satisfied.
`REQUEST FOR ADMISSION No. 19: Admit that document
`KOLBE_003792 is a true and authentic copy of the genuine
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`original document, a preliminary drawing dated April 2, 2012
`and entitled PROJECT 2013 CASEMENT/AWNING FRAME.
`REQUEST FOR ADMISSION No. 20: Admit that document
`KOLBE_003792 was made at or near the April 2, 2012 date
`indicated on the document.
`REQUEST FOR ADMISSION No. 21: Admit that document
`KOLBE_003792 was made at or near the time of the regularly
`conducted activity to which the document pertains.
`REQUEST FOR ADMISSION No. 22: Admit that document
`KOLBE_003792 was made by Scott Hintz.
`REQUEST FOR ADMISSION No. 23: Admit that document
`KOLBE_003792 was made by a person or persons employed
`by or engaged by Kolbe as part of their duties as a Kolbe
`employee or their engagement by Kolbe.
`REQUEST FOR ADMISSION No. 24: Admit that document
`KOLBE_003792 was prepared and kept in the course of
`regularly conducted activity of Kolbe’s business.
`REQUEST FOR ADMISSION No. 25: Admit that document
`KOLBE_003792 was the attachment (or identical to the
`attachment) referenced by Scott Hintz as the “attached
`preliminary print” in document KOLBE_0028207-
`KOLBE_0028208 (as redacted).
`REQUEST FOR ADMISSION No. 26: Admit that all
`foundational requirements for the admission of document
`KOLBE_003792 have been satisfied.
`Interrogatory
`
`Interrogatory No. 1:
`For each and any Request for Admission that Petitioner
`has not provided an unqualified admission, provide the
`complete legal and factual bases upon which Petitioner relies to
`support its bases to deny said Request for Admission.
`See Ex. 2019; Ex. 2020; Ex. 2021.
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`Along with the submitted exhibits including the discovery request,
`noted above, Patent Owner explained that the evidence of copying relates to
`alleged copying by Petitioner in the design of Petitioner’s VistaLuxe
`window products based on the design of Patent Owner’s H3 window. PO
`Mot. 1. Patent Owner contends its H3 window embodies the claimed
`invention of the ’365 patent at issue in this IPR and that Petitioner’s
`VistaLuxe window products copy the H3 product design and also infringe
`the ’365 patent’s claims. See id.; see also Ex. 2025 (claim chart as produced
`in the related district court litigation identifying how VistaLuxe® widow
`products allegedly infringe the ’365 patent); Ex. 2026 ¶¶ 4, 6–12 (Second
`Declaration of Patent Owner’s expert, Phillip Drake, herein the “Second
`Drake Declaration,” providing his opinion that Petitioner’s VistaLuxe
`window products infringe the ’365 patent, that Patent Owner’s H3 window
`products embody the ’365 patent’s claims, and that the VistaLuxe products
`appear to copy the H3 products). Furthermore, Patent Owner argues that,
`because the VistaLuxe products (allegedly) infringe the ’365 patent (and
`copy the H3 product), their commercial success is highly relevant to Patent
`Owner’s contentions of non-obviousness of the ’365 patent’s claims. PO
`Mot. 1.
`Petitioner argues that Patent Owner is seeking “to turn this IPR into
`full-blown litigation” and “PO’s secondary consideration arguments of
`commercial success and copying will create trials within this trial regarding
`infringement, which Petitioner vigorously contests.” Pet. Opp. 1 (citing Ex.
`1027, which is a non-infringement chart). Petitioner further argues that “PO
`has failed to demonstrate that there is more than a mere possibility that the
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`financial information sought will be useful or that the other documents it
`seeks are not duplicative of less sensitive information it already has
`permission to use.” Id.
`A. GARMIN FACTOR 1–MORE THAN A MERE POSSIBILITY AND
`MERE ALLEGATION; BEYOND SPECULATION
`Patent Owner avers it knows that there is more than a mere possibility
`and that it is not merely alleging that something useful will be produced
`based on its proposed discovery request because Patent Owner is already in
`possession of the documents at issue relating to Petitioner’s alleged copying.
`PO Mot. 3–4. These documents relating to copying were produced in the
`related district court litigation, hence their Bates labeling. Similarly, Patent
`Owner argues that in that related district court litigation Patent Owner
`successfully moved to compel Petitioner to produce the other requested
`documents relating to sales of the accused products. See Ex. 2023 (district
`court litigation hearing transcript granting such discovery). Patent Owner
`explains that, because of the timing of the court’s stay of the related district
`court litigation, this discovery was not completed and Patent Owner is not
`similarly in possession of such documents relating to sales. PO Mot. 4.
`As noted above, Patent Owner contends that its own H3 window
`product embodies the claimed invention of the ’365 patent, that the H3
`product was copied in Petitioner’s VistaLuxe products, and that the
`VistaLuxe products infringe at least claim 1 of the ’365 patent. PO Mot. 1;
`Ex. 2025; Ex. 2026 ¶¶ 4–12. Patent Owner argues that, as follows these
`alleged facts, there is a presumed nexus between the Petitioner’s VistaLuxe
`products and the claims because the products are coextensive with at least
`claim 1 of the ’365 patent, having been shown to infringe based on public
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`information. PO Mot. 5 (citing Ex. 2025; Ex. 2026, Ex. 2022 ¶ 6). Patent
`Owner argues the ’365 patent’s claims are directed to window assemblies as
`a whole, as such are sold by each party, and the claims do not encompass a
`mere component of such products. Id.
`Regarding the sought discovery of its financial/sales information,
`Petitioner argues “useful,” under Garmin, means more than just relevant or
`admissible, but requires that the sought evidence be actually substantively
`favorable to the moving party’s contentions. Pet. Opp. 1. Petitioner argues
`that the Board often denies requests for the production of financial data to
`show commercial success, that Patent Owner has not cited a case where the
`Board has authorized such discovery, and that Patent Owner has no
`knowledge whether Petitioner’s sales data sought will show commercial
`success. Id. at 2. Petitioner also argues that Patent Owner has failed to even
`argue that Petitioner’s sales were a direct result of the unique characteristics
`of the claimed invention, rather than some other factors or some prior art
`characteristic. Id. at 3 (citing In re Applied Materials, Inc., 692 F.3d 1289,
`1299-1300 (Fed. Cir. 2012); Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d
`731, 740 (Fed. Cir. 2013)).
`Regarding the specifically requested document production relating to
`the issue of copying, Petitioner argues the request for the documents
`identified as marked KOLBE_002807–208, KOLBE_003792, and
`KOLBE_0002997–3039 is unwarranted because these documents are
`redundant with respect to the information in the document marked
`KOLBE_0003802.xlsx, which Petitioner has agreed PO may use. Pet. Opp.
`6. Further, Petitioner argues that Patent Owner’s contentions that these
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`documents would show copying amounts to mere speculation based on
`alleged access to Patent Owner’s designs and similarity in Petitioner’s
`products. Id. at 7.
`Regarding the sought discovery on sales/financial information, 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. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)
`(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 support for its contention that the VistaLuxe products
`embody the features of claim 1 of the ’365 patent, including an element-by-
`element claim chart and supporting expert witness declaration testimony
`averring that all the claim elements of the challenged claims are present in
`Petitioner’s VistaLuxe products and that it is the advantages provided by the
`unique elements of the patented product, as opposed to prior existing ones,
`that are responsible for industry demand for such windows. See Ex. 2025;
`Ex. 2026 ¶¶ 4–12. We will assess this issue further (as needed) upon a more
`complete record developed through trial, including the presumption of nexus
`and any rebuttal by Petitioner, for example, evidence showing that any
`commercial success was due to factors other than the patented invention.
`See, e.g., Ormco Corp., 463 F.3d at 1312; see also Fox Factory, Inc. v.
`SRAM, LLC, --- F.3d ---, 2019 WL 6884530 (Fed. Cir. Dec. 18, 2019)
`(explaining that a variety of unclaimed elements may influence whether
`“coextensivity” exists and whether there is a presumption of nexus between
`commercial success and the claimed invention). Petitioners’ presented
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`arguments are 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.
`Petitioner also argues that Patent Owner has not shown that the
`information sought is favorable in substantive value because Patent Owner
`“has no knowledge of whether or not Petitioner’s sales data would show
`commercial success.” Pet. Opp. 2. But, Petitioner also states that its
`“financial information is kept strictly confidential.” Id. at 3. Given that the
`sales data is only available by obtaining it from Petitioner, Patent Owner
`cannot reasonably be expected to show that the sales data demonstrates the
`commercial success of the product as a precondition to obtaining the sales
`data.
`
`Regarding the sought documents on the issue of copying, Patent
`Owner has very specifically identified documents that are in Petitioner’s
`possession, and which appear to have already been produced in the related
`district court litigation. The suggested potential redundancy of the
`documents, argued by Petitioner, is not a persuasive reason not to authorize
`their production here.
`We agree with Patent Owner that its requests for discovery outlined
`above are not merely speculative and are tailored, based on Patent Owner’s
`knowledge, to obtain the limited production of relevant evidence on
`objective indicia of non-obviousness. Hence, we conclude Patent Owner is
`in possession of a threshold amount of evidence or reasoning tending to
`show beyond speculation that something useful will be uncovered in the
`requested specific documents concerning the issue of copying and in the
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`documents concerning the issue of commercial success. Garmin, IPR2012-
`00001, Paper 26 at 7.
`B. GARMIN FACTOR 2–LITIGATION POSITIONS
`Patent Owner argues that its sought discovery is not seeking
`Petitioner’s litigation positions. PO Mot. 7.
`Petitioner argues that Patent Owner is seeking its litigation-related
`positions, in part, because the related district court case was stayed before
`the parties mutually exchanged financial data and Patent Owner now seeks
`to acquire Petitioner’s sales information without also producing its own.
`Pet. Opp. 3–4. Petitioner also submits Exhibit 1024, which is a motion to
`compel discovery in the related district court litigation where Patent Owner
`argued it needed discovery somewhat similar to that sought here relating to
`commercial success because it was relevant to damages. See Ex. 1024.
`Patent Owner’s sought discovery is tailored to and relates to its own
`defenses regarding patentability. Petitioner’s argument appears to be that it
`would be unfair, in view of the status of the related district court litigation,
`to allow just one party to produce discovery on financial information. It is
`not apparent from Petitioner’s arguments why the production of sales
`information would be an improper revelation of any specific litigation-
`related position. Moreover, the fact that there is some overlap in the
`potential evidence in Patent Owner’s non-obviousness defense here and the
`issue of damages in the related district court litigation is not determinative
`on the issue of whether the sought sales/financial information of Petitioner
`should be produced as related to the former.
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`C. GARMIN FACTOR 3–ABILITY TO GENERATE EQUIVALENT
`INFORMATION BY OTHER MEANS
`Patent Owner argues that the sought discovery can only be obtained
`from Petitioner because the documents at issue are Petitioner’s own
`documents and information. PO Mot. 6.
`Regarding the sought, specifically identified, documents (relating to
`the issue of copying), Petitioner argues Patent Owner “can generate
`equivalent information by other means” because Petitioner has already given
`Patent Owner permission to use a document (i.e., the document labeled
`KOLBE_0003802.xlsx) that purportedly shows access to Patent Owner’s
`product. Pet. Opp. 7.
`We agree with Patent Owner; Petitioner appears to be the only source
`for the discovery sought. Petitioner has also not persuasively established
`that, with respect to the documents specifically directed to the copying issue,
`production of each of these documents would be redundant, as argued.
`D. GARMIN FACTOR 4: EASILY UNDERSTANDABLE REQUESTS
`Patent Owner argues that it has specifically defined the sought
`discovery in terms of specific documents identified by Bates labeling. PO
`Mot. 7. We note, the Bates-labeled documents relate to the copying issue
`only, not the commercial success issue; however, the production of the latter
`was interrupted only by the court’s stay of the district court litigation where
`that production was originally to take place. Patent Owner also argues that
`its requests for admissions (and related interrogatory) are directed only to
`authenticating the sought documents for admissibility. Id.
`We agree with Patent Owner that its discovery requests are easily
`understandable. They are specific as to documents to be produced where
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`those documents can already be identified by Patent Owner, and are as
`specific as possible when referring to other requested documents, the
`existence of which is reasonably known based on Petitioner’s statements to
`the court in the district court litigation (see Ex. 2023 (counsel for Petitioner
`agreeing that Petitioner would be happy to pull together and exchange the
`financial information on yearly sales and costs, including units sold of the
`accused product, by “the week of the 21st”)). Moreover, the actual
`instructions accompanying the discovery requests are contained in a page or
`less in each requesting document. See Exs. 2019–2021.
`E. GARMIN FACTOR 5–OVERLY BURDENSOME OR SENSIBLE AND
`REASONABLY TAILORED
`Patent Owner argues its requests are not overly burdensome on
`Petitioner in light of the similar discovery that has already occurred or was
`ordered to occur and in-process in the related district court litigation. PO
`Mot. 7. Patent Owner also points out that Petitioner acknowledged to the
`district court that it could provide the sales and financial information in that
`case, which is now sought here. Id.; see also Ex. 2023 (Petitioner’s counsel
`explained, “I don’t see it being an issue.”).
`Petitioner argues that the production of sales information would be
`overly burdensome because the requested information is not in existence (in
`a producible form) and would have to be assembled by Petitioner’s
`employees. Pet. Opp. 4. This, argues Petitioner, its employees have not yet
`done because of the stay of the related district court litigation. Id. Petitioner
`also argues that the burden that would be placed upon it by granting the
`additional discovery into sales information would extend beyond the
`specifically sought discovery to rebuttal evidence required to fairly develop
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`the record, which “may” include advertising budgets, marketing strategies,
`and market research, and other confidential information relating to window
`products not alleged to infringe. Id.at 5. Petitioner argues this further
`discovery “would also likely” include Patent Owner’s sales, marketing, and
`market share information, among other things, as well as additional
`witnesses, experts, and related depositions. Id.
`As they are set forth in Patent Owner’s Exhibits to its Motion and
`reproduced above, we agree that Patent Owner’s requests for discovery are
`narrowly and reasonably tailored to specific issues, to known or reasonably
`known documents, and to written discovery directed to the admissibility of
`such documents. Further, we agree that, although there is some burden on
`Petitioner, there is no unreasonable burden on Petitioner to produce the
`requested documents because they have already been collected and
`produced, were in the process of being collected and produced, or were
`about to be collected or prepared and produced in the related district court
`litigation. Moreover, Patent Owner has opted for written discovery in lieu of
`deposition to further reduce any burden on Petitioner. Petitioner’s
`speculation on the possible further discovery necessary to provide a fair
`record in this case is not persuasive.
`III. CONCLUSION
`We reminded the parties of their ongoing duty to serve relevant
`information that is inconsistent with any position taken in this IPR, including
`a position relating to objective indicia of non-obviousness. See 37 C.F.R.
`§ 42.51(b)(1)(iii). Further, we remind the parties that if any confidential
`information is filed in this matter, a motion to seal should be concurrently
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`filed with a proposed protective order, such as the default protective order in
`Appendix B of the Board’s Trial Practice Guide. 37 C.F.R. §§ 42.14 and
`42.54.
`We find that the Garmin factors favor granting Patent Owner’s
`requested discovery, as set forth above, and Patent Owner has made a
`sufficient showing to justify its requested additional discovery. We
`authorize Patent Owner’s requests for document production, request for
`admissions, and interrogatory and set the deadline for such discovery at
`January 17, 2020. Furthermore, we amend the schedule of the proceedings
`in view of the ordered discovery.
`For the foregoing reasons, it is
`ORDERED that Patent Owner’s Motion for Additional Discovery is
`granted;
`FUTHER ORDERED that the discovery sought in Patent Owner’s
`requests for production as set forth in Exhibit 2019 is granted;
`FURTHER ORDERED that the discovery sought in Patent Owner’s
`requests for admissions as set forth in Exhibit 2020 is granted;
`FURTHER ORDERED that the discovery sought in Patent Owner’s
`interrogatory as set forth in Exhibit 2021 is granted;
`FURTHER ORDERED that the above-ordered discovery shall be
`completed by January 17, 2020; and
`FURTHER ORDERED that the Scheduling Order is amended such
`that Due Date 1 is February 3, 2020, Due Date 2 is April 20, 2020, and Due
`Date 3 is May 25, 2020.
`
`
`
`
`17
`
`
`
`IPR2019-00933
`Patent 8,561,365 B2
`
`
`
`For PETITIONER:
`
`Kevin P. Moran
`Shane Brunner
`Melanie J. Reichenberger
`Nicolaas T. Bressers
`MICHAEL BEST & FRIEDRICH LLP
`kpmoran@michaelbest.com
`sabrunner@michaelbest.com
`mjreichenberger@michaelbest.com
`ntbressers@michaelbest.com
`
`For PATENT OWNER:
`
`Daniel W. McDonald
`Thomas R. Johnson
`Michael S. Wagner
`Karen L. Beckman, Ph.D.
`MERCHANT & GOULD P.C.
`dmcdonald@merchantgould.com
`tjohnson@merchantgould.com
`mwagner@merchantgould.com
`kbeckman@merchantgould.com
`SierraPacific_IPR@merchantgould.com
`
`
`18
`
`
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