By Scott A. McKeown
| January 23, 2013
Mandatory Disclosure Option Disregarded
Now that over one hundred inter partes reviews (IPRs) and covered business method proceedings (CBMs) have been filed, the parties to those proceedings are actively considering their rights and duties with respect to the limited discovery available at the Patent Trial & Appeal Board (PTAB). PTAB Trial Practice and Procedure Rule 51 provides for two options for "mandatory initial disclosures." The options are akin to initial disclosures provided by the Federal Rules of Civil Procedure.
As a reminder, the major bar associations lobbied for the USPTO to include the option in the final rules.
Perhaps, not surprisingly, parties are not agreeing to voluntarily participate in discovery for trials that are yet to be instituted. Likewise, as discovery is "limited" if and when a trial begins, there is little motivation to volunteer information that an adversary may not be entitled to in the first instance. To date, the mandatory initial disclosure option has been largely ignored in IPR filings, but may be worth a closer look for those involved in a CBM.
Rule 51(a) provides the option, and generally tracks Rule 26(a)(1) of the Federal Rules of Civil Procedure. PTAB Trial Practice and Procedure Rule 51(a) provides that the parties may, at their discretion, agree to “initial disclosures” and upon institution of the trial the parties “may automatically take discovery of the information identified in the initial disclosures.” The Patent Trial Practice Guide indicates that these agreed upon initial disclosures should conform to one of two options, namely:
(1) the name and, if known, the address and telephone number of each individual likely to have discoverable information—along with the subjects of that information—that the disclosing party may use to support its claims or defenses, unless the use would be solely for impeachment; and
(2) a copy—or a description by category and location—of all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses, unless the use would be solely for impeachment. (77 Fed.Reg. 48762)
The second option is described as being “more extensive” and further includes the identification of the persons knowledgeable about and documents and things relating to the secondary indicia of non-obviousness or any alleged public use to the extent corresponding challenges are made in the petition. (Id.)
These initial disclosures may still be pursued even if the parties fail to reach an agreement as described above. Rule 51(a)(2) provides that the parties "may seek the mandatory discovery set forth in paragraph (a)(1) . . . by motion” where the parties “fail to agree to [that] mandatory discovery.” While a motion is possible once trial begins, it seems highly unlikely that the movant would be entitled to a laundry list of information sources for a typical IPR (based on patents and printed publications only). As to CBM, if relying on "on-sale bar" or "public use" defenses, which are likely to involve some discovery, it may be worthwhile to pre-plan for the inevitable.
Based on filings to date, it seems that mandatory initial disclosures will be relatively uncommon outside of CBM and PGR proceedings.