Practitioners 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.” 

As infringement is not at issues before the PTAB, the need for discovery is much less pronounced as compared to district court/ITC litigation. In attempting to qualify the types of discovery that would be available, the USPTO has identified two classes: “routine” discovery and “additional” discovery. A party to a PGR or IPR is entitled to routine discovery, additional discovery is only available if shown to be “in the interests of justice” for IPR, and if good cause is shown for PGR.

Routine discovery has been identified as any exhibit not otherwise served, cross examination of a declarant, and non-cumulative information that is inconsistent with a position taken by the party before the PTAB. (The last classification is somewhat broad in scope, but is meant to cover situations, for example, where a test result is at issue in the proceeding and inconsistent results are known to a party.)

Strangely, while the rules with respect to discovery are quite straightforward, and as the statute implies…quite limited, at virtually every one of the USPTO road shows explaining the new rules, the vast majority of practitioner questions are directed to discovery practices. The most common inquiry seems to revolve around the need to secure “additional discovery” to explore secondary indicia of non-obviousness.

As a reminder, MPEP 716.01(a) lists several categories of objective evidence that may tend to refute an obviousness determination.

–Evidence of criticality or unexpected results
Evidence of commercial success
–Long-felt but unsolved needs
Failure of others

Evidence of copying
–Skepticism of experts

Such evidence can make the difference in a proceeding. Yet, in the vast majority of cases such evidence is typically disregarded as unrelated to the claimed invention (i.e., nexus)

The PTAB can expect the bolded classifications above to be routinely cited as areas requiring “additional discovery” from a petitioner. In an IPR proceeding such discovery would have to be in the interests of justice. Thus, unless presenting the Board with a more compelling rationale than “there might be something there,” such discovery will almost certainly be denied. On the other hand, in PGR, a Patentee need only show “good cause;” a much lower hurdle.

The difference in standards could subject a PGR petitioner to disclose a significant amount of otherwise confidential business information under Patentee secondary indicia theories that would otherwise be denied in an IPR proceeding. To be sure, protective orders are also provided for by the Rules, but this additional discovery burden may be yet another reason to opt for IPR over PGR given the choice.