Trials@uspto.gov
`571-272-7822
`
`Paper No. 16
`Date: March 25, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BRYCER, LLC, and BRYCER MANAGEMENT, INC.,
`Petitioner,
`
`v.
`
`TEGRIS, INC.,
`Patent Owner.
`
`IPR2023-01196
`Patent 11,126,966 B2
`
`Before HUBERT C. LORIN, MEREDITH C. PETRAVICK,1 and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`PER CURIAM.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1 Judge Petravick joins in this Order after reviewing the transcript of the
`March 12, 2024 conference call.
`
`
`571-272-7822
`
`Paper No. 16
`Date: March 25, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BRYCER, LLC, and BRYCER MANAGEMENT, INC.,
`Petitioner,
`
`v.
`
`TEGRIS, INC.,
`Patent Owner.
`
`IPR2023-01196
`Patent 11,126,966 B2
`
`Before HUBERT C. LORIN, MEREDITH C. PETRAVICK,1 and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`PER CURIAM.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1 Judge Petravick joins in this Order after reviewing the transcript of the
`March 12, 2024 conference call.
`
`
`
`IPR2023-01196
`Patent 11,126,966 B2
`
`
`Patent Owner’s counsel contacted the Board on March 7, 2024
`seeking authorization to file a motion for additional discovery to obtain
`certain documents listed in a document entitled “Patent Owner Requests for
`Production Nos. 1-4” (Ex. 3001, 5) (“RFP No(s).”). Ex. 3001.
`A conference call was held on March 12, 2024, among respective
`counsel for Patent Owner and Petitioner, and Judges Lorin and Dougal. A
`transcript of the call has been entered into the record. See Paper 13.
`For the reasons stated below, we deny Patent Owner’s request to file a
`motion for additional discovery.
`Patent Owner contends RFP Nos. 1–3 are relevant to commercial
`success and RFP No. 4 is relevant to copying. Paper 13, 4:10–13.
`According to Patent Owner, the RFPs are related to patentability because
`“the commercial success of the [Petitioner’s] product is directly related its
`implementation of the claimed invention that’s recited in claim 8, and that
`commercial success is an indicia of non[obviousness].” Id. at 10:11–16.
`According to Patent Owner, the parties conferred to discuss Patent Owner’s
`RFPs and Petitioner objected to each of them. Id. at 3:24–4:5.
`Petitioner opposes Patent Owner’s request and contends Patent Owner
`cannot show that any of its RFPs are in the interest of justice under Garmin
`Int’l, Inc. v. Cuozzo Speed Tech. LLC, IPR2012-00001 (Paper 26) (PTAB
`Mar. 5, 2013) because there is nothing in Patent Owner’s RFPs that “ties to
`the specific issues in this proceeding and it’s simply a fishing expedition in
`the hopes that something may be uncovered.” Paper 13, 10:22–11:12.
`Petitioner also contends Patent Owner’s request should be denied because
`there is not any evidence that would tie the RFPs to commercial success or
`
`2
`
`
`
`IPR2023-01196
`Patent 11,126,966 B2
`
`copying, RFP Nos. 1–3 do not seek information about a particular feature,
`and RFP No. 4 is unreasonably broad. Id. at 11:13–12:13.
`“[I]n inter partes review, discovery is limited as compared to that
`available in district court litigation.” Garmin, IPR2012-00001, slip op. at 5
`(Paper 26). Additional discovery is permitted when the moving party shows
`it “is in the interests of justice.” 37 C.F.R. § 42.51(b)(2)(i). We consider
`several factors in determining whether additional discovery is in the interests
`of justice. Garmin, IPR2012-00001, slip op. at 6–7 (Paper 26). Those
`factors include whether the requested discovery: 1) is based on more than a
`mere possibility of finding something useful; 2) seeks the other party’s
`litigation positions or the basis for those positions; 3) seeks information that
`reasonably can be generated without the discovery requests; 4) is easily
`understandable; and 5) is overly burdensome to answer (the “Garmin
`factors”). Id.
`The party requesting discovery should already be in possession of a
`threshold amount of evidence tending to show beyond speculation that
`something useful will be discovered. See Garmin, IPR2012-00001, slip op.
`at 6 (Paper 26). Patent Owner has not demonstrated a prima facie showing
`that there is more than a mere possibility that the documents it anticipates
`Petitioner will provide will be useful to our determination of the
`patentability of the challenged claims. Patent Owner states that RFP Nos. 1–
`3 seek Petitioner’s “annual revenues [and] annual subscriptions to show that
`with their entry to the market they achieved enormous success.” Paper 13,
`7:12–15. Patent Owner contends it will “prove that there’s a nexus between
`that success and the proactive notification, and standardized form, and web
`registry that’s recited in claim 8” of Patent Owner’s patent using materials
`
`3
`
`
`
`IPR2023-01196
`Patent 11,126,966 B2
`
`from Petitioner’s website, testimony from declarants that Petitioner’s system
`works in almost precisely the same manner as Patent Owner’s system as it
`relates to the features that are recited in the challenged claims, and claim
`charts from the co-pending litigation. Id. at 7:15–8:6; see also id. at 13:25–
`14:19. Thus, Patent Owner takes the position that the RFPs will uncover
`evidence of copying because Petitioner’s products include aspects that
`correspond to the steps or features of claim 8. Id. at 7:12–8:6, 13:25–14:19.
`Without any additional evidence, we determine Patent Owner’s allegations
`of infringement are insufficient to support its request in this proceeding.
`We are also unpersuaded that Patent Owner’s RFPs are not overly
`burdensome. For example, RFP No. 2 broadly requests information about
`“the number and type of devices under management or otherwise monitored
`by the Accused Products,” such as fire hydrants and related life-saving
`systems, but Patent Owner’s claims are directed to computer-implemented
`methods for using a fire hydrant management software and a web-based
`registry to track requisite inspection of an owned asset, not the fire hydrants
`themselves. Ex. 3001, 5; see also Paper 13, 4:23–5:4. Additionally, RFP
`No. 4 broadly requests “[d]ocuments that contain statements of fact or
`opinion about Tegris, Tegris Fire, Compliance Model, or U.S. Patent No.
`11,126,966.” Ex. 3001, 5. Although Patent Owner offered to limit RFP No.
`4 to documents that refer to Tegris, Compliance Engine (i.e., Petitioner’s
`product), or the challenged patent (see Paper 13, 8:21–9:7, 13:13–25), we
`still find that this is overly burdensome because the request could include
`any document mentioning Petitioner’s product or any discussion of Patent
`Owner, without any relationship to copying.
`
`4
`
`
`
`IPR2023-01196
`Patent 11,126,966 B2
`
`
`For the above reasons, we are not persuaded Patent Owner will show
`that the Garmin factors favor the additional discovery it seeks.2
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s request to file a motion for additional
`discovery is denied.
`
`
`
`
`
`2 During the conference call, Patent Owner likened the circumstances of its
`request to a decision on a motion for additional discovery the Board granted
`in Brunswick Corporation v. Volvo Penta of the Americas, LLC (“Volvo
`Penta”). Paper 13, 9:8–10:3 (citing Brunswick Corporation v. Volvo Penta
`of the Americas, LLC, Case IPR2020-01512 (Paper 25) (PTAB May 12,
`2021)). According to Patent Owner, its RFPs are similar to those at issue in
`Volvo Penta in which “under very similar circumstances, the board allowed
`discovery regarding the revenues annual number showing the commercial
`success of the Petitioner, and also allowed similar discovery showing
`copies.” Id. at 9:8–15. We do not find Patent Owner’s discussion of Volvo
`Penta persuasive because the Board’s decision in that proceeding is not
`precedential, and the moving party’s request to file a motion for additional
`discovery in that proceeding was not opposed. See Volvo Penta, Case
`IPR2020-01512, slip op. at 2 (Paper 21) (PTAB Apr. 29, 2021).
`
`5
`
`
`
`IPR2023-01196
`Patent 11,126,966 B2
`
`PETITIONER:
`
`Matt Berkowitz
`Patrick Colsher
`Khue Hoang
`REICHMAN JORGENSEN LEHMAN & FELDBERG LLP
`mberkowitz@reichmanjorgensen.com
`pcolsher@reichmanjorgensen.com
`khoang@reichmanjorgensen.com
`
`PATENT OWNER:
`
`Chris Perque
`John Boyd
`FISHERBROYLES LLP
`chris.perque@fisherbroyles.com
`john.boyd@fisherbroyles.com
`
`6
`
`
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