Trials@uspto.gov
`571-272-7822
`
`Paper 45
`Date: December 6, 2023
`
`
`
`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 Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)(i)
`
`
`
`
`

`

`IPR2023-00726
`Patent 9,066,958
`
`Patent Owner Elaine and Reinhold W. Vieth filed an authorized motion to
`compel Petitioner MOM Enterprises, LLC to produce certain sales data and market
`share information and certain documents relating to alleged copying. Paper 28
`(“Mot.”)1, 1. Petitioner opposes. See generally Paper 37 (“Opp.”). For the
`reasons discussed below, we grant Patent Owner’s motion.
`ANALYSIS
`Background and the Requested Discovery
`Petitioner raises obviousness arguments against the challenged claims.
`See Paper 2 (Petition), 2. 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 and copying. Mot. 3. More specifically,
`Patent Owner alleges that Petitioner’s prior product was not successful in the
`marketplace, but Petitioner changed its product formulation to copy the market-
`leading Ddrops2 product, and Petitioner’s product thereafter achieved commercial
`success. Id. at 4. Patent Owner alleges that “[e]vidence of Petitioner’s sales,
`marketing plans and documents showing the difference between Petitioner’s past
`and current products show that the commercial success was because of the
`inventive features, and not some other reason.” Id.
`
`
`1 For the reasons discussed in our November 17, 2023 Order (Paper 34), we deem
`stricken from Patent Owner’s Motion Appendices 2 and 3, as well as any citations
`to these Appendices or to the now-expunged Exhibits 2016 and 2017.
`2 As we noted in our Institution Decision, Ddrops Company appears to be a
`licensee of the ’958 patent. Inst. Dec. 41. We further noted that on the preliminary
`record, based on its composition, dose, and instructions for use, “it appears that the
`‘Baby Ddrops® product’ embodies the claimed invention.” Id. (quoting Ex. 2004
`¶ 5).
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`1
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`IPR2023-00726
`Patent 9,066,958
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`Patent Owner’s motion includes a set of document requests containing five
`categories of documents, where each requested document is identified by Bates
`number. Mot., App’x 1. Petitioner previously produced each requested document
`to Patent Owner in the now-stayed litigation Ddrops Company, Reinhold Vieth,
`and Elaine Vieth v. MOM Enterprises, LLC, d/b/a Mommy’s Bliss, C.A. No. 1:22-
`cv-00332-GBW (D. Del.). Mot. 1–2. Petitioner designated the requested
`documents as “confidential” or “confidential – attorneys’ eyes only” under the
`District Court’s Protective Order in that litigation, which Patent Owner explains
`precludes their use in this proceeding. Id. at 5. Patent Owner requests that we
`order Petitioner to produce the documents for use in this proceeding.
`Petitioner responds that Patent Owner’s requests are overbroad and unduly
`burdensome, covering 294 documents consisting of 2,496 pages, “as well as a
`transcript from the third-party deposition of Innovative Labs.” Opp. 1, 7.
`Petitioner argues that Patent Owner “[has] not made a threshold showing, beyond
`mere speculation, that explains why the requested documents will be useful.”
`Id. at 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).
`We consider the following factors in determining whether the requested
`discovery is necessary for good cause: (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;
`2
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`IPR2023-00726
`Patent 9,066,958
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`(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.
`1. Specific Factual Reason for Reasonably Expecting the Discovery
`Will be Useful
`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.
`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.
`As to alleged copying, Patent Owner argues that the requested discovery
`shows that “Petitioner embarked on a strategy to copy the ‘Baby Ddrops® product’
`and take market share from Ddrops, the acknowledged market leader.” Mot. 4.
`Petitioner responds that “Patent Owners only request documents relating to a
`change in composition,” but any alleged copying of the Ddrops formulation is
`irrelevant, given that the challenged claims recite a method of administration, not a
`product. Opp. 2. Petitioner further argues that “Patent Owners do not contend that
`the documents will show that Petitioner knew the composition of Ddrops’s product
`or were aware of the ’958 Patent’s claims.” Id. at 3.
`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
`
`3
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`IPR2023-00726
`Patent 9,066,958
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`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, or access to information about a patentee’s work (such
`as an issued patent or published article), coupled with circumstantial evidence
`regarding changes to a competitor’s design. See Wyers, 616 F.3d at 1246; Liqwd,
`Inc. v. L’Oréal USA, Inc., 941 F.3d 1133, 1138 (Fed. Cir. 2019).
`On consideration of the arguments and evidence of record, we determine
`that Patent Owner has provided sufficient reasoning tending to show beyond mere
`speculation that the requested information will be useful to Patent Owner’s
`allegations of copying. Patent Owner alleges that “Petitioner embarked on a
`strategy to copy the ‘Baby Ddrops® product’ and take market share from Ddrops.”
`Mot. 4. Patent Owner contends that due to the District Court’s Protective Order, it
`is unable to reference the specific contents of document that support this
`contention. Id. at 2. In its motion, however, Patent Owner represents that the
`requested documents “directly rebut Petitioner’s obviousness arguments and are
`useful to establishing secondary indicia of non-obviousness.” Id. According to
`Patent Owner, Petitioner’s changes led to success of the reformulated product in
`the marketplace. Id.
`Petitioner acknowledges that it “updated the formulation of its vitamin D
`product in recent years.” Opp. 2. Nevertheless, it argues that “Patent Owners do
`not contend that the documents will show that Petitioner knew the composition of
`Ddrops’s product or [was] aware of the ’958 Patent’s claims.” Id. at 3. We
`disagree. “Evidence of copying may include . . . access and similarity to a patented
`product.” Liqwd, Inc., 941 F.3d at 1137. By arguing that “Petitioner embarked on
`a strategy to copy the ‘Baby Ddrops® product’ and take market share from
`Ddrops” and that “Petitioner changed the composition of its product to be
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`IPR2023-00726
`Patent 9,066,958
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`identical” to the alleged market-leading Ddrops, Patent Owner is alleging access
`and similarity to a product that purportedly meets the composition and
`administration limitations of the challenged claims. See Mot. 4.
`Petitioner’s argument that documents relating to a change in composition are
`irrelevant because the challenged claims are method claims, not product claims, is
`unavailing. See Opp. 2–3. Although the claims are method claims, they do recite a
`particular composition, i.e., one that “consist[s] of a nutritional or therapeutic
`effective amount of 9 to 9000 mcg/ml vitamin D in a liquid triglyceride of 6 to 12
`carbon chain length.” Ex. 1001, 9:37–40. Accordingly, alleged efforts to copy the
`claimed composition (even if it was a known composition, as Petitioner alleges
`(Opp. 6)), is relevant to whether Petitioner’s product embodies the composition
`limitations of the claimed method.
`Petitioner also asserts that it changed the product formulation “to improve
`the shelf life,” not for any reason having to do with “Ddrops’s product or the
`method in the ’958 Patent.” Opp. 5. This argument is more appropriately offered
`as rebuttal to the merits of any copying argument Patent Owner presents in its
`Patent Owner Response. For purposes of the instant Motion, for the reasons
`discussed above, we find that Patent Owner has sufficiently shown that the
`requested discovery will uncover something useful to its copying claims. See
`Garmin, IPR2012-00001, Paper 26, at 7.
`Turning to commercial success, 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.
`See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006).
`Patent Owner avers that the requested discovery will show that “Petitioner’s prior
`product was not successful in the marketplace,” but after “chang[ing] the
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`IPR2023-00726
`Patent 9,066,958
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`composition of its product to be identical,” it achieved commercial success
`“because of the inventive features, and not some other reason.” Mot. 4.
`Petitioner responds that Patent Owner has “failed to establish how the
`requested documents will show that it is the claimed method of administering
`Petitioner’s vitamin D product that contributed to Petitioner’s commercial success
`(e.g. via increased sales of market share).” Opp. 5. According to Petitioner, the
`instructions on its product contain multiple administration methods, several of
`which are not covered by the challenged claims. Id. at 6. Petitioner also argues
`that Patent Owner “omit[s] additional factors they are aware of from the district
`court litigation that contributed to Petitioner’s sales,” such investor funding that
`allowed increased marketing efforts. Id.
`We find that Patent Owner has made a sufficient threshold showing that
`something useful to its commercial success claims will be uncovered in the
`requested discovery. See Garmin, IPR2012-00001, Paper 26, at 7. At this stage,
`Patent Owner adequately alleges that after changing its product formulation to one
`that allegedly meets the composition limitations of the challenged claims,
`Petitioner’s product newly met with commercial success. Mot. 4. Petitioner’s
`counter arguments are more appropriately offered as rebuttal to the merits of any
`commercial success arguments Patent Owner argues in its Patent Owner Response.
`In other words, Petitioner is free to challenge any such arguments by arguing, e.g.,
`that any commercial success is due to factors other than the patented invention,
`such other administration methods or increased marketing. See, e.g., Ormco Corp.,
`463 F.3d at 1312.
`Finally, Petitioner argues that Patent Owner offers only a blanket statement
`of the alleged relevancy of the documents, and has not provided “any description
`of the[ requested] documents or their contents that would support their theory.”
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`IPR2023-00726
`Patent 9,066,958
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`Opp. 3–4 (citing Intex Recreation Corp. v. Team Worldwide Corp., IPR2018-
`00859, Paper 38 at 6 (PTAB Dec. 21, 2018); Polygroup Ltd. v. Willis Elec. Co.,
`Ltd., IPR2016-00800, Paper 28 at 13 (PTAB Jan. 13, 2017)). We disagree. Patent
`Owner’s requests, together with its motion, adequately characterize the contents of
`the requested documents.
`For example, the specific documents listed in requests (1) and (2) are
`described as sufficient to show Petitioner’s sales and market share of its current
`and predecessor products. See Mot. App’x 1, at 1–3. The documents in
`request (4) are described as showing “Petitioner’s sales efforts, marketing efforts,
`and performance results” for Petitioner’s current and predecessor product. Id. at
`3–5. The documents in requests (5) and (6) are described as showing “the efforts
`to succeed in selling Petitioner’s” current and predecessor products, and
`“evidenc[e] attempted variations in product specifications, strategic product plans,
`instructions for use and administration, and ingredients.” Id. at 5–6. Patent Owner
`explains its view that this information will show alleged copying, commercial
`success, and nexus to “the inventive features.” Mot. 4.
`Request (3) covers a transcript (and related exhibits) from “the Rule 30(b)(6)
`Deposition of Chantel Wood, testifying on behalf of Innovative Labs, the
`manufacturer of Petitioner’s current product.”3 Mot. App’x 1, at 3. We
`
`3 Neither party asserts that any of Patent Owner’s requests encompasses
`confidential information belonging to a third party (such as Innovative Labs).
`Accordingly, on this record, we assume that Petitioner designated all of the
`requested documents, including the Wood transcript and the related exhibits, as
`“confidential” or “confidential – attorneys’ eyes only” pursuant to the District
`Court’s Protective Order based on the alleged inclusion of Petitioner’s confidential
`material in these documents. To the extent the requested materials were designated
`“confidential” or “confidential – attorneys’ eyes only” due to inclusion of a third
`party’s confidential information, we do not authorize Patent Owner to pursue such
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`Patent 9,066,958
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`understand that these documents allegedly support Patent Owner’s contention that
`Petitioner “did not test or consider any other composition in developing” its current
`product formulation. Mot. 4; see also Ex. 2015, 22:14–25. In sum, we find that
`Patent Owner has sufficiently described the requested documents and how they
`relate to Patent Owner’s alleged secondary considerations of nonobviousness.
`For all of the foregoing reasons, we determine that this factor favors granting
`Patent Owner’s Motion.
`2. Whether the Requests Seek Patent Owner’s Litigation Positions
`Patent Owner argues, and we agree, that its requests do not seek information
`regarding Petitioner’s litigation positions. Mot. 4–5. Petitioner does not dispute
`this. See generally Opp.
`3. Ability to Generate Equivalent Information by Other Means
`Patent Owner argues that it has no other means available to generate
`equivalent information. Mot. 5. Petitioner does not dispute this. See generally
`Opp. Given that Patent Owner seeks apparently non-public information regarding
`Petitioner’s product development, market share, and sales data, we agree with
`Patent Owner and determine that this factor favors granting Patent Owner’s
`Motion.
`
`4. Whether the Requests Have Easily Understandable Instructions
`Patent Owner argues, and we agree, that “by seeking only specified
`documents previously produced in the District Court action, the requests are easily
`understandable.” Mot. 5. Petitioner does not dispute this. See generally Opp.
`
`
`materials. A party seeking to compel testimony or the production of documents
`from a third party must first seek the Board’s authorization to apply for a
`subpoena. See 37 C.F.R. § 42.52(a); 35 U.S.C. § 24.
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`Patent 9,066,958
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`5. Whether the Requests Are Overly Burdensome to Answer
`Patent Owner argues that its requests are “essentially burdenless,” because
`all Petitioner “needs to do is to acknowledge ‘production’ of the specified
`documents in this IPR.” Mot. 5. Petitioner responds that “[m]any of the requested
`documents are subject to a protective order that precludes disclosure beyond trial
`counsel.” Opp. 7.
`Petitioner’s argument is unavailing. We do not, by this Order, modify or
`disturb the District Court’s Protective Order. Rather, we presume that the District
`Court’s Protective Order does not preclude Petitioner from separately authorizing
`Patent Owner to use Petitioner’s own information in this proceeding. Should
`Petitioner desire to protect its confidential information in this case, it may—as we
`previously advised—apply for a protective order to govern use of the information
`in this case. See Paper 11 (Scheduling Order), 2–3; Ex. 2015, 38:4–18. Indeed,
`the parties apprised the Board weeks ago that they were working together on a
`proposed protective order. See Ex. 2015, 38:4–18.
`Petitioner further argues that Patent Owner’s requests are “grossly overbroad
`and unduly burdensome, especially because Patent Owners have not justified their
`request for ‘each document’ ‘with specificity.’” Opp. 7 (quoting Intex, IPR2018-
`00859, Paper 37 at 6). In Intex, the requesting party listed broad categories of
`documents and contended they were all “highly relevant to secondary
`considerations of non-obviousness.” Intex, IPR2018-00859, Paper 37 at 5–6. The
`Intex panel found that it was left “to guess as to the nature of information sought
`and how the information is relevant.” Id. at 6. Here, in contrast, we understand the
`categories of documents Patent Owner is requesting and how the requested
`information relates to Patent Owner’s commercial success and copying theories, as
`discussed above.
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`Patent 9,066,958
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`Petitioner also argues that production of the requested documents is “unduly
`burdensome because it would put Petitioner’s highly-confidential information at
`greater risk of public disclosure, and in the hands of a competitor, in a final written
`decision.” Opp. 7 (citing 77 Fed. Reg. 48756, 48761 (Aug. 14, 2012) (“There is an
`expectation that [confidential] information will be made public [if] . . . identified in
`a final written decision[.]”)). This concern is speculative and premature, and thus
`does not provide a reason for avoiding discovery of the alleged objective indicia.
`See, e.g., Liqwd, Inc., 941 F.3d at 1136–37 (explaining that the objective indicia
`analysis is “a fundamental part of the overall § 103 obviousness inquiry” and
`“objective indicia may often be the most probative and cogent evidence of
`nonobviousness”) (citations omitted). Additionally, we remind Petitioner that prior
`to any confidential information becoming public, a party will have an opportunity
`to be heard, e.g., via a motion to expunge. See 37 C.F.R. § 42.56.
`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 discovery.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’ Motion is granted; and
`FURTHER ORDERED that no later than one business day after entry of
`this Order, Patent Owner shall serve upon Petitioner the document requests
`attached as Appendix 1 to the Motion; and
`
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`IPR2023-00726
`Patent 9,066,958
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`FURTHER ORDERED that Petitioner shall produce the requested
`documents to Patent Owner no later than ten days after service of the discovery
`requests, or at a time that is mutually agreeable to the parties.
`
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`IPR2023-00726
`Patent 9,066,958
`
`For PETITIONER:
`David B. Conrad
`Lance E. Wyatt
`Sarika Patel
`Casey M. Kraning
`FISH & RICHARDSON P.C.
`conrad@fr.com
`wyatt@fr.com
`kraning@fr.com
`For PATENT OWNER:
`Mark E. Ungerman
`UNGERMAN IP PLLC
`mungerman@ungermanip.com
`
`Peter J. Davis
`WHITEFORD, TAYLOR & PRESTON LLP
`pdavis@wtplaw.com
`
`Alan M. Anderson
`L. Reagan Florence
`ALAN ANDERSON LAW FIRM LLC
`aanderson@anderson-lawfirm.com
`rflorence@anderson-lawfirm.com
`
`
`
`
`
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