Garmin Int'l v. Cuozzo Speed Techs LLC.

Trial@uspto.gov 	Paper No. 26
571-272-7822 	Entered March 5, 2013
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
GARMIN INTERNATIONAL, INC. ET AL.
Petitioner
v.
CUOZZO SPEED TECHNOLOGIES LLC
Patent Owner
Case IPR2012-00001
Patent 6,778,074
Before JAMESON LEE, MICHAEL P. TIERNEY, and JOSIAH C. COCKS,
Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION
On Motion For Additional Discovery
37 C.F.R. §§ 42.20 and 42.51(b)(2)
INTRODUCTION
The patent owner (“Cuozzo”) has filed a motion for additional discovery.
(Paper 21). Petitioner (“Garmin”) has opposed. (Paper 22). Cuozzo has replied.
(Paper 25).

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Prior to filing of the discovery motion, a conference call was held on
February 14, 2013, during which time Cuozzo presented a proposed set of
discovery requests and was advised by the Board of five (5) factors which are
important in determining what constitutes discovery satisfying the “necessary in
the interest of justice” standard under 35 U.S.C. § 316(a)(5). (Paper 20). The
Board appreciates the effort expended by Cuozzo in:
1. 	reducing the number of interrogatories from nineteen to nine;
2. 	reducing the number of document requests from twenty to ten;
3. 	shortening instructions for answering interrogatories from nine
pages in length to two pages; and
4. 	shortening the instructions for producing documents from eight
pages to two.
Cuozzo’s motion also requests what amounts to the equivalent of a district
court litigation deposition of a corporate entity under Fed. R. Civ. P. 30(b)(6) on
topics covered by the interrogatories and document requests, for information “that
may not be recorded in documents or revealed in interrogatory responses.” (Paper
21, 8:14 to 9:2).
We have considered every item of the discovery request. In its request,
Cuozzo disagrees with the Board’s non-final interpretation of the term “integrally
attached” in instituting this inter partes review. For purposes of this decision on
Cuozzo’s motion for discovery, we employ Cuozzo’s interpretation, recognizing
that all discussions below apply under either our non-final interpretation or
Cuozzo’s proposed interpretation and that the outcome would be no different.

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For reasons discussed below, Cuozzo’s motion for additional discovery is
denied.
DISCUSSION
A. 	Routine Discovery
First, we address Cuozzo’s attempt to label all of its document requests and
interrogatories as “Routine Discovery” under 37 C.F.R. §§ 41.51(b)(1)(i) and
41.51(b)(1)(iii). In that regard, it is noted that the Board’s authorization is not
required for Cuozzo to conduct routine discovery. Office Patent Trial Practice
Guide, 77 Fed. Reg. 48756, 48761 (Aug. 14, 2012).
Under 37 C.F.R. § 41.51(b)(1)(i), “[u]nless previously served or otherwise
by agreement of the parties, any exhibit cited in a paper or in testimony must be
served with the citing paper or testimony.” Under 37 C.F.R. § 41.51(b)(1)(iii),
“[u]nless previously served, a party must serve relevant information that is
inconsistent with a position advanced by the party during the proceeding
concurrent with the filing of the documents or things that contains the
inconsistency” [privileged information excepted].
Cuozzo construes 37 C.F.R. § 41.51(b)(1)(i) as including the file histories of
prior art patents relied on by Garmin in its petition for review. That interpretation
is unreasonably broad. It is sufficient that Garmin provides copies of the patents
relied on in its petition since Garmin did not rely on the file histories of those
patents. Cuozzo may independently obtain the file histories of the cited prior art
patents if it so desires, through the Patent Application Information Retrieval
(PAIR) System available on the USPTO Web site (www.uspto.gov/patents/ebc) or
other commercial services.

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Cuozzo construes 37 C.F.R. § 41.51(b)(1)(iii) as including discovery
requests “tailored to target information inconsistent with positions Garmin has
taken in its Petition.” (Paper 21, 7:5-6). The language appears to be in line with
the applicable rule by use of narrow terms such as “tailored,” “target,” and
“inconsistent with positions Garmin has taken.” In actuality, however, Cuozzo is
not referencing information known to Garmin to be inconsistent with positions
taken in the petition. Rather, Cuozzo casts a wide net directed to broad classes of
information which may not include anything inconsistent with positions taken by
Garmin.
Routine discovery under 37 C.F.R. § 41.51(b)(1)(iii) is narrowly directed to
specific information known to the responding party to be inconsistent with a
position advanced by that party in the proceeding, and not broadly directed to any
subject area in general within which the requesting party hopes to discover such
inconsistent information. Cuozzo’s attempt to label very broad discovery requests
as narrowly tailored routine discovery is misplaced.
Also, under 37 C.F.R. § 41.51(b)(1)(iii), the time for serving such routinely
discoverable inconsistent information is concurrent with the filing of documents or
things that contains the inconsistency. Nothing in Cuozzo’s motion persuades us
that Garmin has failed to comply with “routine discovery” under 37 C.F.R.
§ 41.51(b)(1)(iii), under our construction of the rule provision as discussed above.
However, to assist in alleviating any concern, we will in the order section of this
decision ask each party to confirm that up to now in this inter partes review it has
produced all information covered by 37 C.F.R. § 41.51(b)(1)(iii) as routine
discovery.

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B. 	Additional Discovery
Under the Leahy-Smith America Invents Act, discovery is available for the
deposition of witnesses submitting affidavits or declarations and for “what is
otherwise necessary in the interest of justice.” 35 U.S.C. § 316(a)(5); see also
37 C.F.R. § 42.51(b)(2)(“The moving party must show that such additional
discovery is in the interests of justice ….”). That is significantly different from the
scope of discovery generally available under the Federal Rules of Civil Procedure.
Congressional debate for the Leahy-Smith America Invents Act indicates
that discovery standards under that legislation for inter partes review are identical
to the standards in the original patent reform bill introduced by Senator Kyl in
2008. 157 Cong. Rec S1375-76 (daily ed. Mar. 8, 2011). During introduction of
the 2008 bill, Senator Kyl commented on the discovery standard for inter partes
review, noting that it “restricts additional discovery to particular limited situations,
such as minor discovery that PTO finds to be routinely useful, or to discovery that
is justified by the special circumstances of the case.” 154 Cong. Rec. S9988 (daily
ed. Sept. 27, 2008)(statement of Sen. Kyl). Senator Kyl further commented that
“[g]iven the time deadlines imposed on these proceedings, it is anticipated that,
regardless of the standards imposed in [sections 316 and 326], PTO will be
conservative in its grants of discovery.” Id. at 9988-89.
Thus, in inter partes review, discovery is limited as compared to that
available in district court litigation. Limited discovery lowers the cost, minimizes
the complexity, and shortens the period required for dispute resolution. There is a
one-year statutory deadline for completion of inter partes review, subject to

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limited exceptions. 35 U.S.C. § 316(a)(11); see also 37 C.F.R. § 42.100(c). What
constitutes permissible discovery must be considered with that constraint in mind.
The statutory standard is “necessary in the interest of justice.” 35 U.S.C.
§ 316(a)(5). We have previously advised Cuozzo, in an order authorizing the filing
of a motion for additional discovery, that the following factors are important
(Paper 20, 2-3):
1. 	More Than A Possibility And Mere Allegation -- The mere
possibility of finding something useful, and mere allegation that
something useful will be found, are insufficient to demonstrate that
the requested discovery is necessary in the interest of justice. The
party requesting discovery should already be in possession of
evidence tending to show beyond speculation that in fact something
useful will be uncovered.
2. 	Litigation Positions And Underlying Basis -- Asking for the
other party’s litigation positions and the underlying basis for those
positions is not necessary in the interest of justice. The Board has
established rules for the presentation of arguments and evidence.
There is a proper time and place for each party to make its
presentation. A party may not attempt to alter the Board’s trial
procedures under the pretext of discovery.
3. 	Ability To Generate Equivalent Information By Other Means –
Information a party can reasonably figure out or assemble without a
discovery request would not be in the interest of justice to have
produced by the other party. In that connection, the Board would
want to know the ability of the requesting party to generate the
requested information without need of discovery.
4. 	Easily Understandable Instructions -- The questions should be
easily understandable. For example, ten pages of complex
instructions for answering questions is prima facie unclear. Such

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instructions are counter-productive and tend to undermine the
responder’s ability to answer efficiently, accurately, and confidently.
5. 	Requests Not Overly Burdensome To Answer -- The requests
must not be overly burdensome to answer, given the expedited nature
of Inter Partes Review. The burden includes financial burden, burden
on human resources, and burden on meeting the time schedule of Inter
Partes Review. Requests should be sensible and responsibly tailored
according to a genuine need.
Factor (1) – More Than a
Possibility and Mere Allegation
Critically undermining all aspects of the discovery motion is Cuozzo’s
misunderstanding of above-identified Factor (1). The essence of Factor (1) is
unambiguously expressed by its language, i.e., the requester of information should
already be in possession of a threshold amount of evidence or reasoning tending to
show beyond speculation that something useful will be uncovered. “Useful” in
that context does not mean merely “relevant” and/or “admissible.” In the context
of Factor (1), “useful” means favorable in substantive value to a contention of the
party moving for discovery. 	In the conference call held on February 14, 2013, we
explained that meaning, in contrast to “relevant” and “admissible” to counsel for
each party.
In its motion, Cuozzo re-wrote Factor (1) as “Likely to Yield Relevant,
Admissible Evidence.” (Paper 21, 9-11). 	The rewritten factor is incorrect, is very
similar to the standard of discovery applicable in district court litigation, and is in
sharp contrast to what Factor (1) means. We reiterate that in the context of Factor
(1), “useful” means favorable in substantive value to a contention of the party

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moving for discovery. That notion is missing entirely from Cuozzo’s rewritten
factor.
The vast majority of Cuozzo’s requested items relate to its potential
assertion of secondary considerations of nonobviousness such as long-felt but
unresolved need, failure of others, commercial success, and copying by others.
Yet, conspicuously absent from Cuozzo’s motion is a threshold amount of
evidence or reasoning tending to show beyond speculation that the information to
be discovered will be “useful” to Cuozzo. For instance, Cuozzo offered no
evidence or sufficient reasoning tending to show beyond speculation that Garmin
copied Cuozzo’s invention, that Garmin had attempted but failed to develop a
device having the features of Cuozzo’s claimed invention, that Garmin achieved
commercial success “because of” any inventive feature recited in Cuozzo’s claims
under review, or that Garmin recognized that there was a long-felt but unresolved
need in the art for a feature implemented by Cuozzo’s claimed invention. Note this
language in Factor (1) above: “The mere possibility of finding something useful,
and mere allegation that something useful will be found, are insufficient to
demonstrate that the requested discovery is necessary in the interest of justice.”
With regard to Cuozzo’s potential assertion of commercial success as a
secondary consideration of nonobviousness, there is an insufficient showing of
nexus between the claimed invention and Cuozzo’s discovery requests. Cuozzo
has not made a sufficient threshold showing that the requested sales and pricing
information are for units the sales of which are due to an inventive feature claimed
by Cuozzo. Cuozzo has not accounted for the presence of other desirable features
implemented on the same units for which sales and pricing information are

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requested. Cuozzo has not even represented that the units for which sales and
pricing information are requested do not embody significant and desirable features
not recited in Cuozzo’s claims under review. Garmin in its opposition represents
that the “speed limit alert feature” is but only one out of numerous features
provided in Garmin’s navigational devices. (Paper 22, 12). We note, in particular,
that although the claims under review require a global positioning system receiver,
none requires that global positioning system receiver to provide assistance in
vehicle navigation. 	Thus, if Garmin’s devices are navigational devices and if
navigational assistance is a substantial and desirable feature, Cuozzo’s requests
lack critical nexus with its claimed invention. At least Interrogatory Nos. 3-7 and
Request for Document Nos. 3, 4, 6, and 8 are adversely affected thereby.
With regard to Cuozzo’s potential assertion of failure by others as secondary
consideration of nonobviousness, we note that an allegation of failure by others is
not evidence of nonobviousness unless it is shown that widespread efforts of
skilled workers having knowledge of the prior art had failed to find a solution to
the problem. In re Allen, 324 F.2d 993, 997 (CCPA 1963). Any failure by Garmin
alone does not establish widespread failure by skilled workers in the art attempting
to solve the same problem. Absent in Cuozzo’s motion is a threshold amount of
evidence tending to show that any skilled artisan having knowledge of the
pertinent prior art had tried but failed to solve a problem related to speed limit alert
indication. And even assuming that there are others who have tried but failed to
solve a speed limit alert indication problem, Cuozzo has not set forth a threshold
amount of evidence tending to show that Garmin itself had also tried but failed to
solve that problem. At least Interrogatory No. 9 is adversely affected thereby.

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Cuozzo speculates that Garmin charged an unusual premium for its
navigation units on the basis of the “speed limit alert feature.” (Paper 21, 11).
Cuozzo requests information to substantiate that speculation. For instance,
Request for Production No. 3 states: “License, settlement, co-development, or
technology transfer agreements directly related to the speed limit alert feature.”
Request for Production No. 4 states: “To the extent the speed limit alert feature is
discussed or addressed in them, Agreements between You and any customer,
supplier, reseller, or distributor (including JVC Kenwood and Chrysler and
excluding End-User License Agreements).” Request for Production No. 6 states:
“Market analysis, market projections, projections, or roadmap Documents
discussing Your decision to develop and commercialize the speed limit alert
feature in Garmin products.” Request for Production No. 8 states: “Documents
sufficient to show the incremental commercial value of the speed limit alert feature
included in Garmin’s Personal Navigation Devices . . . .” Interrogatory Nos. 3-5
are similar.
However, Cuozzo has not presented a threshold amount of evidence or
reasoning tending to show beyond speculation that Garmin was able to charge or
demand a premium in the sense of unusual high price specifically for or on account
of the “speed limit alert feature.”
Request for Production No. 9 states: “Documents relating to the ‘074 patent,
the inventor Guisseppe [sic] Cuozzo, or discussions YOU had with Mr. Cuozzo
about his invention.” Request for Production No. 10 states: “The file history for
U.S. Patent No. 8,258,878 [Garmin’s own patent on a navigation device], any
agreements relating to it, and Documents discussing the ’074 [Cuozzo’s patent

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under review] or Guiseppe [sic] Cuozzo in connection with the ’978 patent.”
Interrogatory Nos. 1, 7, and 8 are directed to Garmin’s own technical development
and introduction of a “speed alert/warning feature.”
Presumably, Request for Production Nos. 9 and 10 and Interrogatory Nos. 1,
7, and 8 pertain to Cuozzo’s potential assertion of copying by Garmin as a
secondary consideration of nonobviousness. However, Cuozzo failed to present a
threshold amount of evidence or reasoning tending to show beyond speculation
that Garmin copied from Cuozzo. Accompanying the motion is a declaration of
Cuozzo’s sole inventor Giuseppe A. Cuozzo. (Ex. 2006). Paragraphs 3 and 4 of
that declaration are reproduced below:
3. 	After my patent issued, I contacted Garmin by telephone
because I noticed Garmin was selling a navigation device with a speed
limit warning function. I asked to speak to someone in Garmin
product development and eventually was contacted by a Garmin
lawyer. I gave the number of my patent to the Garmin representative.
4. 	The Garmin lawyer told me that my claims did not cover
Garmin’s navigation devices because, according to the Garmin
lawyer, my patent covered a system built in to the vehicle and their
devices did not have a gauge cluster.
The above-quoted testimony establishes, at best, only that a Garmin lawyer
had evaluated Cuozzo’s patent and determined that Garmin’s devices did not
infringe. It does not even establish that Garmin was aware of Cuozzo’s patent
prior to making its navigation devices having a “speed limit alert feature.” Even
assuming infringement of Cuozzo’s claims under review by Garmin’s devices,

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which is a matter we do not determine, that is not evidence of copying. Garmin
might well have independently conceived of and developed the invention.
Under Federal Circuit jurisprudence, not every competing product that
arguably falls within the scope of a patent is evidence of copying, because
otherwise every infringement suit would automatically confirm the
nonobviousness of the patent. Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir.
2010); Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir.
2004). Copying as objective evidence of nonobviousness requires evidence of
effort to replicate a specific product. Wyers, 616 F.3d at 1246; Iron Grip Barbell
Co., 392 F.3d at 1325. As we have stated above, Cuozzo failed to present a
threshold amount of evidence or reasoning tending to show beyond speculation
that Garmin copied from Cuozzo.
With regard to Cuozzo’s potential assertion of long-felt but unresolved need
as secondary consideration of nonobviousness, Cuozzo has not set forth a threshold
amount of evidence or reasoning tending to show that Garmin recognized that
there had been a long-felt but unresolved need with regard to a speed limit alert
indicator. At least Interrogatory Nos. 1, 2, 5, and 7-9, and Request for Document
Nos. 3, 4, and 6 are adversely affected thereby.
On page 1 of the motion, Cuozzo states generally that it seeks to discover the
identity of Garmin’s privies. In that regard, Interrogatory No. 6 states: “If any
non-Garmin entity owns or has an interest in the speed limit alert technology or
intellectual property, please identify the entities and Describe their respective
interest.” The motion does not explain for what purpose Cuozzo seeks the identity
of Garmin’s privies and a description of their respective interests. It is thus

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unknown in what manner Cuozzo expects the answer to the interrogatory to be
“useful” in this review. During the telephone conference conducted on February
14, 2013, we already advised counsel for Cuozzo that the Federal Rules of Civil
Procedure do not apply in inter parte review and that Cuozzo must apply the rules
for inter partes review regarding joinder of another party including a privy.
Factor (2) -- Litigation
Positions and Underlying Basis
Consideration of Factor (2) weighs against granting Cuozzo’s Request for
Production No. 5, which reads: “Documents You intend to rely upon at trial or
have provided or intend to provide to an expert witness or declarant.” In
Factor (2), we indicate that asking for the other party’s litigation positions and the
underlying basis for those positions is not necessary in the interest of justice. Also
in Factor (2), we indicate that the Board has established rules for the presentation
of arguments and evidence and that there is a proper time and place for each party
to make its presentation, and that a party may not attempt to alter the Board’s trial
procedures under the pretext of discovery. If and when Garmin presents affidavit
or declaration testimony to support any position it maintains, Cuozzo has an
opportunity to cross-examine the affiant or declarant with regard to the basis of the
testimony. Garmin is not obligated to keep Cuozzo informed of its positions on
substantive issues before Garmin is ready to present them in this review.
Factor (3) -- Ability to Generate
Equivalent Information by Other Means
With regard to Cuozzo’s potential assertion of long-felt but unresolved need
as secondary consideration of nonobviousness, and whether Garmin charged an

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unusual premium for the “speed limit alert feature,” the discovery requests also fail
Factor (3) – Ability to Generate Equivalent Information by Other Means. Cuozzo
has not adequately explained why it needs Garmin’s views to establish what
Cuozzo believes had been a long-felt but unresolved need with regard to speed
limit indicators. Cuozzo can rely on its own analysis of the state of the art or on
the opinions of independent analysts. With regard to the price differential between
Garmin products with and without the “speed limit alert feature,” Cuozzo can
conduct its own market survey and make its own comparison. Further applying
Factor (3), we note that Garmin need not produce the file histories of prior art
references relied upon by Garmin in its petition, which is the subject of Request for
Production No. 7, or the file history for Patent 8,258,978, which is the subject of
Request for Production No. 10.
Factor (4) – Easily Understandable Instructions
Factor (4) concerns easily understandable instructions. We have considered
the two-page instructions for interrogatories and the two-page instructions for
document requests and conclude that the instructions are easily understandable.
Factor (5) – Not
Overly Burdensome to Answer
In Factor (5), we consider whether the requests are overly burdensome to
answer, given the one-year statutory deadline for inter partes review. The burden
includes financial burden, burden on human resources, and burden on meeting the
time schedule of this review. Requests should be sensible and responsibly tailored
according to a genuine need.

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As is explained with sufficient specificity in Garmin’s opposition,
compliance with the discovery request (except for production of several file
histories) requires a very significant expenditure of human and financial resources.
Even if Garmin suspects that no document meets a particular request, it is legally
obligated to make a diligent search for information. The opposition notes that
Garmin has millions of pages of engineering documents that potentially have to be
searched to determine if any contain a reference to the “speed limit alert feature.”
The opposition also notes that responding to Interrogatories 3 and 4 will likely
require 20-30 hours of time to compute the information on a product-by-product
basis because of the manner in which Garmin maintains its financial data. (Paper
22, 8).
Garmin’s estimate is that responding to the document requests could require
approximately 75-125 labor hours and cost $22,500-$37,500 dollars, that
responding to the interrogatories could require approximately 50-75 labor hours
and cost $15,00[0]-$22,500 dollars, and that the cost of producing one or more
persons to testify at a deposition could require approximately 50-75 labor hours
and cost $15,000-$22,500 dollars. (Id. at 8-9). The total cost estimate is $52,500 to
$82,500.
The burden imposed on all parties for meeting the time schedule of this inter
partes review is also a consideration under Factor (5). Garmin filed its petition on
September 16, 2012. Cuozzo waived its right to file a preliminary response. We
instituted review on January 9, 2013. Cuozzo first requested authorization to file a

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motion for discovery on February 14, 2013. 	We cannot conclude on these facts
that Cuozzo unduly delayed its request for additional discovery.
In considering whether the requests are responsibly tailored according to a
genuine need under Factor (5), however, we identify Document Request No. 1 as
failing in that regard. It reads as follows: “Documents and Things You considered
in preparing Your responses to patent owner’s Interrogatories.” The undue breadth
of such a request is self-evident. It suffices to say only that the documents and
things need not contain anything useful or even relevant. The more thoughtful and
diligent the respondent is in answering the interrogatories by considering the
“potential” relevance of more items, the more items need to be produced regardless
of usefulness and relevance. There is no valid reason for such an all-encompassing
demand.
The Request for Deposition in the
Manner of Fed R. Civ. P. 30(b)(6)
Cuozzo requests deposing a representative of Garmin under Fed. R. Civ. P
30(b)(6), on many of the same topics addressed by its Interrogatory Nos. 1-9 and
request for Documents 1-10. Thus, all of the problems and deficiencies discussed
above with respect to interrogatories and document production requests equally
apply to the deposition request where the subject areas overlap.
CONCLUSION
For reasons discussed above, we conclude that Cuozzo’s motion has not met
the “necessary in the interest of justice” standard for any one of the requested items
of discovery in its proposed Interrogatory Nos. 1-9, proposed Request for

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Document Production Nos. 1-10, and proposed deposition of a Garmin
representative pursuant to Federal Rule of Civil Procedure 30(b)(6).
ORDER
It is
ORDERED that Cuozzo’s motion for additional discovery is denied; and
FURTHER ORDERED that each party shall, within five days of the date
of this communication file a paper to confirm whether it has, up to March 4, 2013,
complied with the requirements of routine discovery under 37 C.F.R
§ 41.51(b)(1)(iii).

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For PETITIONER
Jennifer C. Bailey
HOVEY WILLIAMS LLP
jcb@hoveywilliams.com
Scott Brown
HOVEY WILLIAMS LLP
jcrawford@hoveywilliams.com
For PATENT OWNER
John R. Kasha
Kasha Law LLC
john.kasha@kashalaw.com
Kelley Kasha
Kasha Law LLC
Kelley.kasha@kashalaw.com