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” need must be demonstrated…quite difficult in all but the most exceptional of circumstances.
As IPRs are patentability trials based on publicly available patents and printed publications, categories (2) and (3) of routine discovery provide the only significant opportunity for discovery. Of course, category (2) is straight forward enough—if there is a declarant submitting testimony— that declarant can be deposed. This leaves category (3) which, as I predicted last April, will be cited by patent owners seeking to embark on district court style fishing expeditions in the name of purported “secondary considerations of non-obviousness.” As made clear last week in the very first IPR filing, IPR2012-00001 (Garmin International Inc, et al v. Cuozzo Speed Technologies LLC) the PTAB is having none of it. (here)
In the Garmin IPR, Patentee Cuozzo filed a motion for additional discovery seeking interrogatories, documents and what appeared to be a F.R.C.P style 30(b)(6) deposition on the topic of secondary considerations of non-obviousness. In filing their motion for additional discovery, Cuozzo curiously explained that the information sought actually qualified as routine discovery(which, of course, requires no such motion), citing category (3) above as permitting discovery requests that target information inconsistent with positions Garmin had taken in its Petition.
In other words, Cuozzo hoped to transform category (3) into a general requirement of “relevance” akin to district court practice for the purpose of opening the discovery floodgates at the PTAB.
In response, the PTAB explained the reality of USPTO trial practice to Cuozzo:
. . .Cuozzo is not referencing information known to Garmin to be inconsistent with positions taken in the petition. Rather, Cuozzo casts a wide net directed to broad classes of information which may not include anything inconsistent with positions taken by Garmin.
Routine discovery under [category (3)] is narrowly directed to specific information known to the responding party to be inconsistent with a position advanced by that party in the proceeding, and not broadly directed to any subject area in general within which the requesting party hopes to discover such inconsistent information. Cuozzo’s attempt to label very broad discovery requests as narrowly tailored routine discovery is misplaced.
[I]nter partes review, discovery is limited as compared to that available in district court litigation. Limited discovery lowers the cost, minimizes the complexity, and shortens the period required for dispute resolution. There is a one-year statutory deadline for completion of inter partes review . . .. What constitutes permissible discovery must be considered with that constraint in mind.
The PTAB then explained that Cuozzo’s motion was equally deficient as a motion for additional discovery under the interests of justice standards, explaining 5 factors that must be considered in that regard as follows:
1. More Than A Possibility And Mere Allegation — The mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient to demonstrate that the requested discovery is necessary in the interest of justice. The party requesting discovery should already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered.
2. Litigation Positions And Underlying Basis — Asking for the other party’s litigation positions and the underlying basis for those positions is not necessary in the interest of justice. The Board has established rules for the presentation of arguments and evidence. There is a proper time and place for each party to make its presentation. A party may not attempt to alter the Board’s trial procedures under the pretext of discovery.
3. Ability To Generate Equivalent Information By Other Means – Information a party can reasonably figure out or assemble without a discovery request would not be in the interest of justice to have produced by the other party. In that connection, the Board would want to know the ability of the requesting party to generate the requested information without need of discovery.
4. Easily Understandable Instructions — The questions should be easily understandable. For example, ten pages of complex instructions for answering questions is prima facie unclear. Such instructions are counter-productive and tend to undermine the responder’s ability to answer efficiently, accurately, and confidently.
5. Requests Not Overly Burdensome To Answer — The requests must not be overly burdensome to answer, given the expedited nature of Inter Partes Review. The burden includes financial burden, burden on human resources, and burden on meeting the time schedule of Inter Partes Review. Requests should be sensible and responsibly tailored according to a genuine need.
The PTAB then explained how the Cuozzo discovery requests were deficient in all regards, especially with regard to the first of the above enumerated factors.
For those plaintiff Patentees brought before the PTAB that are accustomed to abusing oppressive district court discovery practices, you are not in Kansas anymore…or for that matter the Eastern District of Texas.