• Subscribe

    Subscribe to the RSS feed Subscribe to the blogs's ATOM feed
    Add to your Google Home Page or Google Reader Add to your My Yahoo!
    Add to your My MSN Add to your My AOL
    Subscribe to the Comments RSS feed Add to your Bloglines
    Email Subscription



  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Archive for the ‘discovery’ Category

Discovery in IPR Proceedings, Much Ado About Nothing

Posted On: Sep. 18, 2013   By: Scott A. McKeown
IPR Additional DiscoveryExpectations of Significant PTAB Discovery Practices Prove Misguided

When discussing Patent Trial & Appeal Board (PTAB) proceedings at CLE events, I am always fascinated by the degree of interest in PTAB discovery procedures. Parties to an Inter Parties Review (IPR) proceeding may obtain what is termed “limited discovery” at the 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 easy to understand, it is simply (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. In the typical case, category (2) is the only routine discovery.

“Additional discovery” defines everything outside of the above noted categories. It is the promise of “additional discovery” that seems to enthrall the masses. 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, there is rarely, if ever, a need for additional discovery that will satisfy the requisite showing. 

Nevertheless, I am routinely asked about ”discovery plans” in IPR. In most cases the plan is simple — don’t plan on getting any. Read the rest of this entry »

Top 5 Mistakes in IPR Petition Drafting

Posted On: Sep. 17, 2013   By: Scott A. McKeown
Caution SignAvoid These Litigation Inspired Drafting Errors

One of the biggest misconceptions about the new patentability challenges of the America Invents Act (AIA) is the notion that these administrative  trial proceedings are somehow analogous to district court litigation — nothing could be further from the truth. Rather, the new AIA proceedings simply skip over the previous patent reexamination examiner phase and go straight to the Patent Trial & Appeal Board (PTAB) phase, with a very limited opportunity for expert depositions along the way.

While it is certainly true that Inter Partes Review (IPR), Post Grant Review (PGR) and the Covered Business Method (CBM) proceedings are “trials,” these PTAB trials are governed by their own unique procedures, and are almost exclusively conducted on paper. As is made clear from the 12 months of proceedings to date, discovery practice is quite limited for these trials since they are based on documentary evidence only (i.e., patents and printed publications).

Looking at the top 5 IPR petition drafting mistakes, it is not surprising that most stem from the failure to recognize the key differences between PTAB and district court proceedings.

Read the rest of this entry »

Limited PTAB Discovery Frustrates District Court Litigators

Posted On: May. 1, 2013   By: Scott A. McKeown
PTAB-discoveryDistrict 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.

Read the rest of this entry »

Do the Federal Rules of Evidence Apply to Patent Trial & Appeal Board Petitions?

Posted On: Mar. 20, 2013   By: Scott A. McKeown
PTAB rules of evidenceRaising of Evidentiary Informalities Prior to Trial Institution

During PTAB patentability proceedings, the Federal Rules of Evidence are applied. And, while the USPTO’s definition of a “proceeding’ includes the preliminary proceeding (i.e., petition filing, preliminary response) it is important to keep in mind that the the trial Order is not the final word of the PTAB on patentability; it is simply a preliminary gauge of the merits prior to trial. The “trial” itself does not actually begin until after institution. As such motions by the Patentee that are directed to perceived evidentiary defects of the petition are deemed premature prior to trial institution.

This issue is often raised in the context of printed publications accompanying a petition to the PTAB for a patentability trial. While patents are considered self authenticating by the USPTO, publications can be considered inadmissable if not authenticated (and perhaps hearsay as to undated submssions) by the petitioner. But, the PTAB has set the time to challenge such evidence post-institution via a motion to exclude.

Read the rest of this entry »

PTAB Denies District Court Style Discovery Antics

Posted On: Mar. 11, 2013   By: Scott A. McKeown
ptab-discoveryPTAB’s Limited Discovery Practices Emphasized in IPR

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)

Read the rest of this entry »

Voluntary Discovery Option in PTAB Post Grant Proceedings Proves Unpopular

initial disclosures post grantMandatory 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.   Read the rest of this entry »

Prepping for Post Grant Discovery Before the Patent Trial & Appeal Board

post grant hold letterDiscovery Practice in Post Grant Patent Proceedings

In patent litigation before the federal district courts and the International Trade Commission (ITC), parties are obligated to preserve and prevent the destruction of potentially relevant information. This duty often commences as soon as litigation is reasonably foreseeable. Many courts also extend the duty to counsel for the litigants and require that counsel take affirmative steps to ensure that their clients are aware of, and take steps to comply with, the duty to preserve documents. As a result, counsel typically consult with their clients regarding this duty and provide their clients with a “litigation hold” letter that explains the measures the client should undertake to preserve potentially relevant information.

The new post grant review (PGR) and inter partes review (IPR) procedures created by the America Invents Act are adversarial proceedings in which the parties may take limited discovery from one another. The question arises: are the parties to PGR and IPR proceedings under a duty to preserve potentially relevant information? Read the rest of this entry »

Discovery Practices Before the Patent Trial & Appeal Board

Posted On: Apr. 4, 2012   By: Scott A. McKeown
secondary considerationsPractitioners Preoccupied with Discovery Opportunities

Generally speaking, “discovery” is a litigation process by which information or facts pertinent to a case can be systematically obtained from an opponent or third party prior to trial. Of course, discovery is not permitted in patent reexamination proceedings because patent reexamination does not qualify as a “contested proceeding” in accordance with 35 U.S.C. §§ 23-24.

The lack of discovery in patent reexamination was often cited by Patentees as an example of the inequities of patent reexamination. For example, Patentees are unable to confirm the given identity of a real-party-in-interest identified in a request for inter partes patent reexamination, which could aid certain unscrupulous filers to dodge potential estoppel effects. Likewise, if the Patentee may be unable to obtain and present certain secondary indicia of non-obviousness (i.e., copying, commercial success of an infringing product, etc) as the third party requester may be the best source of such information.

With the passage of the America Invents Act (AIA) comes new, contested proceedings to challenge patent validity at the USPTO. These proceedings, Post Grant Review (PGR) and Inter Partes Review (IPR) will be available as of September 16, 2012. The proceedings will be conducted by the new Patent Trial & Appeal Board (PTAB) and will include “limited discovery.”

In their proposed rules to implement these new, contested proceedings, the USPTO has fleshed out the meaning of “limited discovery.”  Read the rest of this entry »