Takeaway: In requesting additional discovery regarding secondary considerations, the requesting party must make an adequate showing regarding the nexus between the claims and the evidence of secondary considerations.

In its Order, the Board denied Patent Owner’s Motion for Leave to File a Motion for Additional Discovery. Previously, Patent Owner filed a motion for additional discovery relating to evidence of secondary considerations, which the Board dismissed without prejudice because the document requests were unduly broad and included information that is publicly available.  The Board noted that Patent Owner may be entitled to a reasonable amount of discovery from Petitioner and directed the parties to meet and confer on the issue.  Following said conference, the parties requested a conference call to discuss the discovery that they could not agree upon.  Patent Owner argued that the original requests were revised, but Petitioner stated that Patent Owner did not limit the requests enough and could not show more than a possibility or allegation that something useful would be found because there was a lack of explanation regarding the nexus between the claims and the evidence of secondary considerations.  The disputed discovery includes five interrogatories, three proposed stipulations, and two document requests.

The Board agreed with Petitioner. Regarding the interrogatories, the Board found that one related to the dollar value of “credit card transactions processed by” Petitioner; however, Patent Owner’s expert declaration did not explain how Petitioner’s product practices the method claims of the patent.  Therefore, Patent Owner had not provided persuasive evidence to show that Petitioner’s method is the claimed invention and had not explained or provided a threshold amount of evidence tending to show there is a nexus between the alleged commercial success and the features of the method claims.

The Board also agreed with Petitioner that Patent Owner’s revised requests for discovery are almost as onerous as the initial requests and were not properly limited per the Board’s original instructions. For example, Patent Owner still requested documents regarding the Time Magazine award in 2010 even though the Board stated previously that this was improper because it appears to request publicly available information.  Patent Owner’s only retort was that it needs this discovery to make sure that the evidence it intends to rely upon is admissible, but the Board stated that no objections to the evidence have been made and Patent Owner has not explained how these objections would be overcome by having Petitioner produce the documents.

Square, Inc. v. REM Holdings 3, LLC, IPR2014-00312
Paper 23: Order on Conduct of the Proceedings
Dated: September 15, 2014
Patent: 8,584,946
Before: Denise M. Pothier, Jennifer S. Bisk, and Patrick R. Scanlon
Written by: Bisk