Finding Evidence of Secondary Considerations


In Square, Inc. v. REM Holdings 3, LLC, IRP2014-00312, Paper 20 (Augist 14. 2014) the patent owner was seeking evidence of secondary considerations.  The Board denied additional discovery, but found that the patent owner made sufficient showing to entitle them to some information from Petitioner regarding sales figures.  A party seeking additional discovery must show more than a possibility or mere allegation that something useful will be found, but this does not meant that the requester must prove conclusively that they will win on the merits before any discovery will be granted.

The Board directed the parties to meet and confer on the issue of discovery and attempt to agree on a reasonable amount of information to produce. In the alternative, the Board said that petitioner may offer to stipulate to certain facts, such as sales figures, in order to avoid producing sensitive documents.  If the parties could not reach an agreement, the patent owner was authorized to renew the motion.

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