District Court Discovery Plans Fall Flat
Parties to an Inter Parties Review (IPR) proceeding may obtain "limited discovery" at the USPTO's Patent Trial & Appeal Board (PTAB). Such discovery is limited
as it must fall in an accepted class of discovery, namely, “routine discovery” or “additional discovery.”See
Rule § 42.51. Routine discovery is generally categorized as: (1) any exhibit not otherwise publicly available or served, (2) cross examination of a declarant, and (3) non-cumulative information that is inconsistent with a position taken by the party before the PTAB.
"Additional discovery" defines everything outside of the above noted categories. To seek such additional discovery in an IPR an "interest of justice" showing is required. Since patent challengers in IPR rely on patent and printed publications filed with their IPR petition, they need only routine discovery (i.e., the ability to cross examine the patentees' declarant).
Patentees on the other hand have been seeking additional discovery at the PTAB on a variety of topics, typically issues of standing and secondary indicia. However, the interest of justice showing is proving quite difficult to meet for patentees. In fact, to date, there has not been any
additional discovery authorized at the PTAB. For plaintiff attorneys more accustomed to the liberal relevance standard of F.R.E. Rule 401, the PTAB's high hurdle for additional discovery is a sobering reality check.