You Need to Show Commercial Success, In Order to Discover Evidence of Commercial Success


In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 19, 2014 (August 22, 2014), the Board patent owner’s motion for additional discovery because it was persuaded that patent owner has shown, beyond mere speculation or possibility, that its requests would return something useful.  The Board noted that the patent owner provided bare assertions of an alleged commercial success without supporting those assertions with facts or other evidence, and failed to provide a threshold amount of evidence tending to show that there is a nexus between the alleged commercial success and the features of the proposed substitute claims.

The Board concluded that patent owner:

 has not provided a threshold amount of evidence of (1) sales allegedly amounting to commercial success, (2) an alleged nexus between the claimed inventions and any commercial success of Petitioner’s products, (3) evidence of efforts to replicate the features of the proposed substitute claims, or (4) evidence that Petitioner has the requested laudatory documents. Although a conclusive showing of any of these facts is not necessary at this stage, some evidence is needed to establish that there is more than a mere possibility that Patent Owner’s requests would uncover something useful.


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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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