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.
In the district court discovery is virtually boundless. District court discovery is possible for information having any tendency to make a fact of consequence more or less probable than it would be without the evidence. On the other hand, the PTAB standard is far more restrictive due to the limited scope and accelerated timing of these patentability proceedings.
The seminal decision on PTAB discovery was issued in Garmin International Inc, et al v. Cuozzo Speed Technologies LLC (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 response, the PTAB explained their systemically different discovery framework to the patentee:
[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 for additional discovery was deficient under the interests of justice standards, explaining 5 factors that must be considered in that regard:
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.
For those practicing before the PTAB that are accustomed to wide open district court discovery practices, your “discovery plan” should be very simple: Don’t plan on getting any.