Expectations 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.

The lack of additional discovery in PTAB proceedings is not a criticism of how the USPTO is operating, quite the contrary. Anyone familiar with past inter partes patent reexamination practices recognized that the need for limited discovery was simply to better adjudicate those few cases in which a party was accused of submitting a seemingly baseless or biased declaration. This problem is solved by category (2) of routine discovery. Yet, outside of the instance where a declaration is baseless or devoid of competence, even this routine discovery is of marginal impact in a typical IPR case.

With district court litigation, often times the expert witness that is believed by the judge or jury is the one demonstrated as most credible, likeable, personable, etc. These factors are easily distorted before non-technical fact finders via deposition sound bites or live testimony, especially in light of the presumption of validity and clear and convincing evidentiary standard applied to patents in the courts. On the other hand, the judges of the PTAB are engineers and/or scientists. These technical judges apply no such presumption and review the written technical record (including deposition transcripts) in light of their own technical training and understanding. As such, PTAB judges will select a “winner” based upon their view of the proferred technical reasoning ….not through the lens of showmanship and presumption applied in district court proceedings. 

For a detailed explanation of the standard for awarding additional discovery in an IPR proceeding, see this post.