Takeaway: The mere possibility of finding something useful is an insufficient basis to compel additional discovery.

In its Order, the Board denied Petitioner’s Motions to Compel Discovery because Petitioner failed to offer evidence beyond mere speculation showing that something of interest was likely to be uncovered.

Petitioner had requested discovery relating to the authentication of Exhibit 1002, a Duke University press release on which the Board had relied to institute one of the challenges in the instant proceedings.  The press release pertained to an FDA designation of a treatment for Pompe’s disease that Duke University Medical Center had developed.  Because Patent Owner made an equity investment in a pharmaceutical company to develop a similar treatment for Pompe’s disease three months after the Duke press release, Petitioner argued that it was “very possible” that Patent Owner saved copies of the press release for its own records.  Alternatively, Petitioner argued that Duke may have directly provided Patent Owner with a copy of the press release because Patent Owner is a sublicensee of Duke’s Patent No. 7,056,512 – a patent that is not at issue in the instant proceedings.  Petitioner argued that Duke may have forwarded a copy of the release to Patent Owner as a means of developing their business relationship.

The Board, however, disagreed that Petitioner had introduced sufficient evidence to demonstrate that its discovery request was “based on more than a mere possibility of finding something useful,” a requirement set forth in Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs. LLC, Case IPR2012- 00001 (PTAB Mar. 5, 2013). It characterized Petitioner’s argument that Patent Owner might have saved the press release in connection with its equity investment as “mere speculation.”

The Board concluded that Petitioner’s argument that Duke may have provided the press release to Patent Owner was “[e]ven more speculative,” because Petitioner had not asserted that the sublicensed patent forming the basis of Patent Owner’s business relationship with Duke was related to treatment of Pompe’s disease. The Board concluded by reminding the parties of their obligations within the discovery context.  Specifically, the Board noted that each party has a self-executing responsibility to provide the other with any relevant information that is inconsistent with any position that party is advancing.  Therefore, the Board noted that, to the extent that Patent Owner is aware of information inconsistent with its position regarding the authenticity of Exhibit 1002, it is obligated to provide that information to Petitioner.

Biomarin Pharmaceutical Inc. v. Genzyme Therapeutic Products Limited Partnership, IPR2013-00534; IPR2013-00537
Paper 42: Order on Petitioner’s Motions to Compel Additional Discovery
Dated: June 10, 2014
Patent 7,351,410 B2; 7,655,226 B2
Before: Lora M. Green, Jacqueline Wright Bonilla, and Sheridan K. Snedden Written by: Green