Trials@uspto.gov
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`571-272-7822
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`Paper 53
`Entered: January 11, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MOM ENTERPRISES, LLC,
`Petitioner,
`
`v.
`
`ELAINE AND REINHOLD W. VIETH,
`Patent Owner.
`
`IPR2023-00726
`Patent 9,066,958 B2
`
`
`
`
`Before JOHN G. NEW, SHERIDAN K. SNEDDEN, and
`CYNTHIA M. HARDMAN, Administrative Patent Judges.
`
`HARDMAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting-in-Part Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
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`571-272-7822
`
`
`Paper 53
`Entered: January 11, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MOM ENTERPRISES, LLC,
`Petitioner,
`
`v.
`
`ELAINE AND REINHOLD W. VIETH,
`Patent Owner.
`
`IPR2023-00726
`Patent 9,066,958 B2
`
`
`
`
`Before JOHN G. NEW, SHERIDAN K. SNEDDEN, and
`CYNTHIA M. HARDMAN, Administrative Patent Judges.
`
`HARDMAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting-in-Part Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`
`
`IPR2023-00726
`Patent 9,066,958 B2
`With our authorization (Paper 46), Patent Owner Elaine and Reinhold
`W. Vieth filed a motion for additional discovery, namely, three depositions
`relating to the alleged objective indicia of non-obviousness of commercial
`success, copying, and long-felt need. Paper 49 (“Mot.”).1 Petitioner MOM
`Enterprises, LLC filed an opposition. Paper 52 (“Opp.”). 2 For the reasons
`discussed below, we grant Patent Owner’s motion as to two of the requested
`depositions, but deny it as to Patent Owner’s request for authorization to
`obtain a subpoena for the deposition of a third party.
`BACKGROUND AND THE REQUESTED DISCOVERY
`Petitioner raises obviousness arguments against the challenged claims.
`See Paper 2 (Petition), 1. Patent Owner responds that the challenged claims
`are not unpatentable as obvious, including because of certain objective indicia
`of non-obviousness, i.e., commercial success, copying, and long-felt need.
`See, e.g., Mot. 1. In particular, Patent Owner alleges that Petitioner “changed
`the chemical composition” of its product “to address flaws” and “to match
`Patent Owner’s product as claimed in the ‘958 Patent,” which led to
`“subsequent commercial success.” Id. at 1–2.
`The Board previously granted a discovery motion from Patent Owner,
`ordering Petitioner to produce as additional discovery certain documents that
`Patent Owner alleged are pertinent to its commercial success and copying
`arguments. See Paper 45. Patent Owner now states that “[a]fter reviewing the
`documents,” it requests “limited, targeted testimony from 3 individuals to
`‘shed further light’ on certain documents, which will further establish
`
`
`1 Patent Owner filed its Motion (Paper 49) under seal. A redacted version of
`the motion appears in the record as an Appendix to Patent Owner’s Motion to
`Seal (Paper 48).
`2 Petitioner filed its Opposition (Paper 52) under seal. A redacted version of
`the opposition appears in the record at Paper 51.
`2
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`IPR2023-00726
`Patent 9,066,958 B2
`secondary considerations of copying, commercial success, and long-felt but
`unmet need.” Mot. 2–3 (quoting Kashiv Pharma, LLC v. Purdue Pharma L.P.,
`IPR2018-00625, Paper 20 at 3, 5 (PTAB July 31, 2018)). Specifically, Patent
`Owner seeks the depositions “Yasmin Kaderali, CEO of Petitioner; Stephanie
`Medina, Senior Director of Research & Development and Quality of
`Petitioner; and Tisha Winters, who formerly was Brand Manager for the
`product in issue.”3 Id. at 1.
`
`ANALYSIS
`The party seeking additional discovery in an inter partes review “must
`show that such additional discovery is in the interests of justice.” 37 C.F.R.
`§ 42.51(b)(2)(i). We consider the following factors in determining whether the
`requested discovery is in the interests of justice: (1) whether the movant has
`provided a specific factual reason for reasonably expecting that the discovery
`will be “useful,” i.e., “favorable in substantive value to a contention”; (2)
`whether the request seeks the other party’s litigation positions and the
`underlying basis for those positions; (3) the movant’s ability to generate
`equivalent information by other means; (4) whether the request has easily
`understandable instructions; and (5) whether the request is overly burdensome
`to answer. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-
`00001, Paper 26 at 6–7 (PTAB Mar. 5, 2013) (precedential). We address each
`factor below.
`
`
`3 Because Ms. Winters is a former employee of Petitioner, Patent Owner seeks
`authorization to apply for a subpoena for Ms. Winters’s deposition. See
`Mot. 1.
`
`
`3
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`IPR2023-00726
`Patent 9,066,958 B2
`1. Specific Factual Reason for Reasonably Expecting the
`Discovery Will be Useful
`Pursuant to Garmin 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. See 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.
`Kaderali and Medina Depositions
`As to the deposition of Ms. Kaderali, Patent Owner argues that she is
`“actively involved in the creative direction of marketing & innovation plans”
`and is familiar “with the packaging and labeling on Petitioner’s product.”
`Mot. 1 (quoting https://mommysbliss.com/blogs/mom/
`runonthepowerofmomsyasmin; citing Ddrops Co. v. MOM Enterprises, LLC,
`No. 1:22-cv-00332-GBW (D. Del.), Docs. 110-1, ¶ 2; 130, ¶ 4). Patent Owner
`argues that she will “provide testimony regarding Petitioner’s sales, marketing
`plans and related documents that show the commercial success of Petitioner’s”
`product. Mot. 4. Patent Owner also argues that given her long tenure at
`Petitioner and her involvement in Petitioner’s “decision to introduce” the
`redesigned product, Ms. Kaderali “will also shed light on the long-felt but
`unmet need for the invention disclosed in the ’958 Patent” and on copying. Id.
`at 5, 1.
`As to the deposition of Ms. Medina, Patent Owner argues that she
`“played a key role in redesigning Petitioner’s product to address flaws in its
`predecessor product and its subsequent commercial success.” Mot. 1–2. As
`
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`4
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`IPR2023-00726
`Patent 9,066,958 B2
`such, Patent Owner contends that “[s]he has knowledge relevant to copying,
`commercial success, and long-felt but unmet need.” Id. at 2.
`Petitioner responds that Patent Owner “fail[s] to show, beyond
`speculation, that something more useful than their documentary evidence will
`be uncovered.” Opp. 1. Petitioner argues that “[t]he documents Patent
`Owner[] highlight[s] suggest only healthy competition,” and “do not suggest a
`connection with the method or composition recited in the challenged claims.”
`Id. at 2–3. Petitioner offers alternative views on what the produced documents
`show regarding the reasons for success of its redesigned product. Id. at 3.
`Petitioner also argues that Patent Owner “cannot show the Board they possess
`a single threshold document suggesting there could be a nexus between
`Petitioner’s change in its product composition and commercial success.” Id.
`After considering the parties’ arguments and evidence of record, we find
`that Patent Owner has the better argument. There appears to be no present
`dispute that Petitioner changed its product composition, and that its product
`enjoys commercial success. See, e.g., Opp. 3 (referencing, but not disputing,
`“Petitioner’s change in its product composition and commercial success”).
`Instead, the parties dispute whether Petitioner’s documents evidence copying
`or merely “healthy competition,” and whether the commercial success was
`“due to the inventive features claimed in the ’958 Patent” or other reasons.
`See, e.g., id. at 2–3.
`We previously found that Patent Owner had sufficiently shown that
`certain of Petitioner’s documents would uncover something useful to its
`copying and commercial success claims. See Paper 45 at 5, 6. Given the
`parties’ competing interpretations of the documents, we find that deposition
`testimony could help shed further light on these documents and Patent
`Owner’s objective indicia arguments. As for the requested depositions of
`5
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`IPR2023-00726
`Patent 9,066,958 B2
`Ms. Kaderali and Ms. Medina in particular, Patent Owner contends, and
`Petitioner does not appear to dispute, that they are knowledgeable regarding
`Petitioner’s marketing plans, product labeling, and product redesign (and the
`produced documents relating to the same)—issues that appear to undergird
`Patent Owner’s objective indicia arguments. Mot. 1–2, 4–5.
`Petitioner argues that Patent Owner has no threshold evidence of a
`nexus between “Petitioner’s change in its product composition and commercial
`success.” Opp. 2. We find that this argument is not dispositive at this
`juncture. Patent Owner alleges that Petitioner changed its product to “match
`Patent Owners’ product as claimed in the ’958 Patent,” which allegedly led to
`“subsequent commercial success.” Mot. 1–2, 4. Patent Owner further argues
`that Petitioner’s product has “no other features . . . which potentially could be
`responsible for commercial success.” Id. at 4. On this record, we find Patent
`Owner’s arguments sufficient to warrant the requested depositions.
`For the above reasons, we find that Garmin factor 1 favors authorizing
`the depositions of Ms. Kaderali and Ms. Medina.
`Winters Deposition
`As to the deposition of Ms. Winters, a former employee of Petitioner,
`Patent Owner asserts that she “was Brand Manager for Petitioner . . . when
`Petitioner redesigned its baby vitamin D product and changed the chemical
`composition to match Patent Owners’ product as claimed in the ’958 Patent.”
`Mot. 2. Patent Owner contends that she “has knowledge relevant to copying
`and commercial success following introduction of the knock-off product in
`February 2021,” but Patent Owner does not elaborate more specifically on the
`nature of this alleged knowledge. Id.
`We find that Patent Owner has not sufficiently articulated a specific
`factual reason for reasonably expecting that the deposition of Ms. Winters will
`6
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`IPR2023-00726
`Patent 9,066,958 B2
`be useful. Patent Owner argues only that she was “Brand Manager” at the
`time of introduction of the redesigned product, but does not specifically
`articulate what knowledge Ms. Winters is expected to have that would be
`useful to Patent Owner’s copying and commercial success arguments. See
`Mot. 2; Opp. 4. Nor does Patent Owner allege that Ms. Winters would be
`knowledge about specific documents produced by Petitioner that undergird
`Patent Owner’s objective indicia arguments.
`For these reasons, we find that Garmin factor 1 does not favor
`authorizing Patent Owner to seek a subpoena for Ms. Winters’s deposition.
`2. Whether the Requested Depositions Seek Petitioner’s
`Litigation Positions
`Patent Owner argues, and we agree, that the requested depositions do
`not seek information regarding Petitioner’s litigation positions. Mot. 5.
`Petitioner does not dispute this. See generally Opp. We therefore find that
`Garmin factor 2 favors authorization.
`3. Ability to Generate Equivalent Information by Other Means
`Patent Owner argues that it has no other means available to generate
`equivalent information regarding Petitioner’s product. Mot. 6. Petitioner
`responds that “the documents Petitioner produced are straightforward,” and
`“the type of information Patent Owner[ is]now seeking through testimony is
`already present in the documents.” Opp. 5.
`After considering the parties’ arguments and evidence of record, we find
`that Patent Owner has the better argument. Patent Owner seeks what appears
`to be non-public information regarding Petitioner’s product development,
`market share, and sales data, including testimony regarding Petitioner’s
`internal, non-public documents. This does not appear to be “[i]nformation a
`party can reasonably figure out or assemble without a discovery request.”
`7
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`IPR2023-00726
`Patent 9,066,958 B2
`Garmin, Paper 26 at 6. Additionally, the parties’ briefing undercuts
`Petitioner’s contention that the documents themselves are “straightforward,
`[and] answer Patent Owners’ questions.” Opp. 5. For example, the parties
`dispute whether the documents show copying or “healthy competition.” Id. at
`2. Accordingly, deposition testimony may be useful in assisting the Board in
`evaluating Patent Owner’s objective indicia arguments.
`For the above reasons, this factor favors granting Patent Owner’s
`Motion.
`
`4. Whether the Requests Have Easily Understandable
`Instructions
`Patent Owner argues, and we agree, that the requested deposition
`notices are easily understandable, and include a list of specific documents on
`which Patent Owner seeks to depose the witnesses. Mot. 6. Petitioner does
`not dispute this. See generally Opp. We therefore find that this factor favors
`authorization.
`5. Whether the Requests Are Overly Burdensome to Answer
`The parties dispute whether the requested depositions will be overly
`burdensome. See Mot. 6–7; Opp. 6–7. The relevant burdens include
`“financial burden, burden on human resources, and burden on meeting the time
`schedule of this review.” Garmin, Paper 26, at 14.
`Neither party raises any issues concerning financial burden or burden on
`meeting the time schedule of this review. Instead, the parties focus on burden
`on human resources. After considering the arguments and evidence of record,
`we agree with Patent Owner that the requested depositions are not overly
`burdensome, including because they will be taken virtually, each deposition is
`expected to last less than one day, and Patent Owner has identified the
`
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`8
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`IPR2023-00726
`Patent 9,066,958 B2
`documents on which it seeks testimony, thereby aiding the witnesses’
`preparation. See, e.g., Mot. 6.
`Petitioner’s complaint that “[m]any of the documents upon which Patent
`Owner[] seek[s] testimony are not limited to Petitioner’s product at issue in
`this IPR, and instead, cover the entire portfolio of Petitioner’s product
`offerings” (Opp. 6) is unavailing. The deposition notices specify that the
`subject of examination is Petitioner’s Mommy’s Bliss Baby Vitamin D
`Organic Drops product, not Petitioner’s other products. See Mot. 12–13, 18–
`19, 24.
`Petitioner also argues that despite Patent Owner identifying specific
`documents to be introduced at the deposition and limiting the length of the
`depositions, Ms. Kaderali and Ms. Medina are “high-level” employees who
`would still have to engage in the time-consuming review of documents to
`prepare for their depositions, no matter how long the requested depositions
`last. Opp. 6–7. We acknowledge Ms. Kaderali’s and Ms. Medina’s positions
`within the company, but on this record we are not persuaded that the time
`commitment to prepare and sit for the depositions is “overly burdensome” on
`human resources. The depositions will last less than one day each, and Patent
`Owner has identified “the exhibits to be relied upon during the deposition and
`a general description of the scope and nature of the testimony to be elicited.”
`Mot. 10, 16.
`As to Ms. Medina, we agree with Petitioner that Patent Owner has not
`established that the deposition of Ms. Winters is not overly burdensome.
`Ms. Winters is a third party who has not worked for Petitioner for over two
`years. Opp. 7. She is “on maternity leave” and “did not generate the
`documents about which Patent Owner[] seek[s] to question her.” Id. These
`factors, combined with the fact that Patent Owner has not adequately
`9
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`IPR2023-00726
`Patent 9,066,958 B2
`articulated any specific or unique knowledge Ms. Winters is expected to have
`that would be useful to Patent Owner’s copying and commercial success
`arguments, convince us that the requested deposition of Ms. Winters would be
`overly burdensome.
`
`CONCLUSION
`Weighing all of the Garmin factors together and for reasons discussed
`above, we conclude that Patent Owner has demonstrated good cause for the
`requested depositions of Ms. Kaderali and Ms. Medina, but has not
`demonstrated good cause for us to authorize Patent Owner to seek a subpoena
`for the deposition of Ms. Winters.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion is granted as to the requested
`depositions of Ms. Kaderali and Ms. Medina, but denied as to the request for
`authorization to seek a subpoena for the deposition of Ms. Winters;
`FURTHER ORDERED that no later than one business day after entry of
`this Order, Patent Owner shall serve upon Petitioner the deposition notices for
`Ms. Kaderali and Ms. Medina that are attached as Appendix 1 to the Motion;
`and
`
`FURTHER ORDERED that the parties shall work together in good faith
`to timely complete the Kaderali and Medina depositions, cognizant of the
`remaining deadlines in the Scheduling Order as modified by the parties
`(Papers 11, 43).
`
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`10
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`IPR2023-00726
`Patent 9,066,958 B2
`
`For PETITIONER:
`David B. Conrad
`Lance E. Wyatt
`Sarika Patel
`FISH & RICHARDSON P.C.
`conrad@fr.com
`wyatt@fr.com
`
`For PATENT OWNER:
`Mark E. Ungerman
`UNGERMAN IP PLLC
`mungerman@ungermanip.com
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`Peter J. Davis
`WHITEFORD, TAYLOR & PRESTON LLP
`pdavis@wtplaw.com
`
`Alan M. Anderson
`ALAN ANDERSON LAW FIRM LLC
`aanderson@anderson-lawfirm.com
`
`11
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