Bar to Appealing 315(b) Disputes Likely to be Overruled

Back in November, the Federal Circuit issued a non-precedential decision in the Click-To-Call Techs. v. Oracle Corp., which openly questioned the continued viability of Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) post-Cuozzo.  As a reminder, Achates held that issues arising under 35 U.S.C. § 315(b) (i.e,, IPR one year, time bar) could not be appealed to the CAFC, pursuant to 314(d).

Today, in Wi-Fi One LLC v. Broadcom (here), the Court granted en banc review of the IPR appeal bar.
The question for en banc review is as follows:

Should this court overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review?

In the earlier Click-to-Call decision, Judge Taranto distinguished jurisdictional issues under the Administrative Procedure Act (APA) as compared to matters of patentability:

314(d). . .refers to a “determination . . .whether to institute an IPR under this section” (emphasis added). As a textual matter, those words clearly encompass the “reasonable likelihood” determination specified in § 314(a), but they leave unclear to what extent they reach determinations of compliance with other statutory provisions bearing on institution. The interpretive task demands a wider focus, beyond the words of § 314(d) alone, as the Court’s analysis in Cuozzo itself shows. . . ..regulations treat compliance with the timing rule for IPRs as a matter of Board “jurisdiction.” 37 C.F.R. § 42.3(b) (in section headed “Jurisdiction,” providing that “[a] petition to institute a trial must be filed with the Board consistent with any time period required by statute”) . . . .  The “jurisdiction” label, while a troublesome one in many contexts, here relates to an Administrative Procedure Act principle that the Court in Cuozzo invoked in stating that, at least sometimes and maybe generally, § 314(d) does not bar review to determine if agency action is “‘in excess of statutory jurisdiction.’”                            

As the Court appears likely to overrule Achates and allow appeal of IPR time bar issues, the question becomes: What will the Court do with incomplete factual records and PTAB denials of further discovery on 315(b) issues?  That is, the PTAB applies the interests of justice standard in determining whether additional discovery is warranted for 315(b) disputes in IPR (typically, for determining relationships among parties). Not surprisingly, the PTAB denies discovery for the vast majority of these disputes. Given the new appeal possibilities, 315(b) issues in ongoing IPRs will likely be reinvigorated as Patent Owners try to reserve such issues for appeal.

Should the Court decide to review such disputes going forward, the Board may decide to loosen its standards to avoid remands on such matters.  Alternatively, the Board will need to be especially mindful of the new review possibilities going forward and provide more fulsome explanations and fact finding as to such discovery denials.

PTAB Moves to Establish More Precedential Decisions

Yesterday, the Patent Trial & Appeal Board (PTAB) announced the designation of five, additional precedential decisions.

Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013) – This order discusses the factors considered in evaluating motions for additional discovery in IPR proceedings. Previously designated as informative, this decision has been treated as de facto precedent for quite some time.

Bloomberg, Inc. v. Markets-Alert Pty, Ltd., CBM2013-00005, Paper 32 (May 29, 2013) – This order discusses the factors considered in evaluating motions for additional discovery in CBM proceedings. (Garmin for CBMs)

Oracle Corp. v. Click-to-Call Techs, LP, IPR2013-00312, Paper 26 (October 30, 2013) (precedential only as to Section III.A.) – This decision pertains to interpretation of “served with a complaint” for purposes of triggering the one-year time bar set forth in 35 U.S.C. § 315(b).  More specifically, this decision stands for the proposition that a dismissal of a prior law suit “without prejudice” prevents that suit from triggering the time bar of 315(b).  This has also been de facto precedent at the PTAB.

MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (July 15, 2015) – This order provides guidance on patent owner’s burden to show entitlement to substitute claims.  More specifically this decision defines “prior art of record” and “prior art known to the patentee” as used in the Idle Free decision, which outlines requirements for motions to amend.  Another decision that has been treated as de facto precedent.

Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739 (Paper 38) (March 4, 2016) – This decision interprets 35 U.S.C. § 312(a)(2).  More specifically, it clarifies that the naming of real-party-in-interest is not a jurisdictional requirement, and that changes during a proceeding, especially prior to institution may be corrected.

With the addition of these decisions, there are now eight (8) precedential PTAB decisions corresponding to AIA trial practice, the other being:

LG Electronics, Inc. V. Mondis Tech, Ltd. IPR2015-00937 (Paper 8) (September 15, 2007) (Dismissal both with prejudice and without prejudice for some issues will trigger 315(b) bar to institution)
Westlake Services, LLC v. Credit Acceptance Corp IPR2014-01176 (Paper 28) (May 14, 2015) (325(e)(1) estoppel is claim-by-claim)
SecureBuy LLC v. CardinalCommerce Corp . CBM2014-00035 (Paper 12) April 25, 2014 (325(a)(1) bar to review after DJ action applies in CBM)

CAFC Finds Board Has Power to Vacate Institution Decision Sua Sponte

The Patent Trial & Appeal Board (PTAB) posed the following question to the public last summer in its Request for Comments:
Real Party in Interest:
5. Should a patent owner be able to raise a challenge regarding a real party in interest at any time during a trial?

Since last summer there have been a handful of IPR proceedings vacated on RPI grounds, post-institution. At the same time, the Board expresses a strong preference that motions for additional discovery on RPI be pursued as early as possible. So, while the Board has shown a willingness to vacate post-institution for improper RPI/privity designations, evidence for advancing such a deficiency (i.e., that the petitioner has failed to name a RPI/privy in its petition) is unlikely to come through PTAB discovery—for now.

This month the Board is expected to release a new rule package responsive to the feedback from last summer’s Request for Comments. The Rules are expected to provide some enhanced ability to secure additional discovery, especially as it relates to RPI.  Given the expectation of more liberal discovery on RPI in the month’s ahead, is RPI a matter of standing that might be raised at any time, even on appeal to the CAFC?

First, the RPI requirement is expressed in a handful of IPR statutes, 35 U.S.C. § 312(a); and 35 U.S.C. § 315(a), (b) and (e).  (The PGR statutes include corresponding provisions, discussed below).

As to 312(a), this statute spells out the requirements of a petition. That is, a petition may be considered only if:
.       .       .      .
(b) the petition identifies all real parties in interest.

For a patentee to prevail under this statute, one might argue that the patentee would need to pursue its RPI argument prior to the time of institution. In other words if this statute expresses any concept of standing, it might be limited in time (i.e., preliminary proceeding only). 
 
315 (a) and (b), on the other hand, do not refer to consideration of the petition, but instead, to institution. For example, 315() provides, “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” (emphasis added) Thus, 315(b) would seem more in the vein of traditional standing concepts. 315(a) recites a similar prohibition, but prohibits a DJ action for invalidity prior to an IPR petition..

35 U.S.C. § 325(a)(1) is the equivalent of 35 U.S.C. 315(a), but specific to PGR. Last month, the CAFC considered whether or not the Board could invoke 325(a)(1) sua sponte to vacate CBM proceedings in GTNX, Inc. v. INTTRA, Inc. (CAFC 2015). In GTNX, the Board vacated the CBMs upon learning that the petitioner challenged the validity of the same patents via declaratory judgment action prior to its CBM petition filings (prohibited by 325(a)(1)). The Court, while not addressing the issue as one of “standing” held that GTNX lacked a clear and indisputable right to have the proceedings continue in the face of the proscription under § 325(a)(1). The court noted the absence of anything in the statute or regulations precluding the Board from reconsidering the institution decision, invoking § 325(a)(1) on its own, or inviting the patentee to file a motion at any time.  One would expect a corresponding analysis for 315(a) or (b).

Currently, the Board does not have any precedential decisions on RPI, or privity due to the fact specific nature of these cases. As a result, some consider this area subject to highly panel dependent. Given this type of additional discovery may become easier to secure in the months ahead, it is likely that RPI/privity will be the focus of many CAFC appeals going forward, perhaps even for the first time.

Changes to PTAB Rules Expected Shortly

Back in June of 2014 the USPTO issued a Request for Information in the Federal Register entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board. The notice posed 17 questions to the public. Since that time, the Office has considered the public feedback and has been working on two sets of changes to PTAB current trial practices.

The first set of changes is expected this month (January). These changes will liberalize current requirements, such as page limits. The January liberalizations will not restrict the present rights of the public in any way. As such, the first round of changes need not go through typical Notice and Comment Rule Making process. Instead, the changes will become final 30 days after they are announced. Expected changes include:

-identifying additional factors to consider for assessing the need for additional discovery in real-party-in-interest disputes
-Clarifying that RPI disputes can be raised at any time
-Switching to a word count system rather than maintaining the current page/margin limits
-Allowing a claim appendix for motions to amend

The second round of changes will be issued this spring through formal, Notice and Comment Rule Making. The second round of changes will address such issues as claim construction (e.g., when to switch from BRI interpretation for patents close to expiration) and when testimonial evidence might be permitted with a preliminary response. 

Should be an eventful year at the PTAB.

2014 CLE Year Comes to a Close

The PatentsPostGrant.com free monthly webinar series has concluded for 2014, but will resume in January 2015. Yet, there remains at least one option for those a few credits short of their 2014 continuing legal education (CLE) requirements. Next Monday, I will host the Strafford Legal webinar entitled: Evolving PTAB Trial Practices: Navigating Complex Procedural Rules — Strategically Using Routine and Additional Discovery, Requests for Joinder, and Motions to Amend. (register here)

For those looking forward to January 2015, the National CLE Conference (CLE & SKI) will be held in Vail Colorado January 8-11th (register here). This program, now in its 32nd year, will cover a full spectrum of hot topics in IP law. The program features a dialogue between the bench and the bar that will include Judge Reyna of the Court of Appeals for the Federal Circuit. (CAFC)

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.

Avoid 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.

1. Deficient Evidentiary Declarations

Almost every IPR or CBM petition filed to date has been accompanied by a supporting declaration of one of skill in the art. The reason for presenting a declaration in support of a petition is simple: (1) the Patentee will almost always respond with their own once trial is ordered, and not filing one at the time of petition may foreclose rebuttal opportunity; and (2) Given that the patentee may not introduce new testimonial evidence at the time of the preliminary response, the petitioner declaration should insulate the petition from being denied by the PTAB in most circumstances.

These declarations, properly presented, are not expert reports that provide ultimate opinions. Instead, declarations are intended to provide evidence of the level of skill in the art, scope and content of the art, or technical understanding of a subject patent specification. Keep in mind that unlike district court judges PTAB judges are technically trained in engineering and/or the sciences. In district court litigation, expert reports provide a notice of later testimony intended to be offered at trial, at the PTAB, the declaration is the testimony. For this reason, declarations presented in an expert report style are sometimes deficient with respect to the requisite factual presentation.

2. “Mix and Match” Grounds of Unpatentability

As IPR petitions are commonly pursued at the time preliminary invalidity contentions come due in a concurrent litigation, filers sometimes try to repurpose their invalidity contentions as grounds of unpatentability in their IPR filing; this can have disastrous consequences. For example, preliminary invalidity contentions commonly identify multiple references for every claim element. By utilizing these contentions in an IPR petition there is no coherent ground of unpatentability presented. In such cases, the PTAB is likely to find the majority of combinations redundant, or completely lacking in requisite detail. If the PTAB rejects a petition on such grounds outside of the 12 month IPR window, there may be no way to refile the challenge in a more appropriate form.

3.  Lack of Coherent Claim Construction Positions

It is well known that the claim construction applied by the PTAB is different than that of the district courts. Still, petition filers are hesitant to provide a proper  PTO claim read in their petitions fearing that their adversary will point this out to the court to argue inconsistency. (That is to say, a broad read at the PTO may be inconsistent with a narrower read advanced in court for non-infringment purposes). In such cases, filers will typically discuss/advocate for their district court claim briefing/Markman hearings, or simply take no position whatsoever. Not surprisingly, the PTAB will arrive at a proper BRI construction in the Trial Order. However, the petitioner loses valuable credibility, which could unfavorably color the findings of the Trial Order. 

It would be a rare district court judge that did not have significant experience with concurrent PTO proceedings at this point. Simply explain the rationale for the different construction.

4.  Redundancy in the Grounds of Unpatentability

Similar to mistake (2) above, redundancy is another common trait of district court invalidity contentions. That is, the presentation of lengthy grounds of invalidity without any explanation of the relative strength for any one ground. In some cases the Board found that a §102 ground of unpatentability may be redundant with a §103 which relies on a different primary reference where the Petitioner does not “articulate any meaningful distinction between those separate disclosures in terms of potential strengths and weaknesses in the application of each disclosure to those claim limitations.”  It is therefore incumbent on the Petitioner to explain why various grounds are materially different with respect to their disclosures of the claimed features.

While PTAB page limits constrain the amount of prior art grounds that may be presented, especially as compared to the former inter partes reexamination practice, it is clear that the PTAB will not go forward on multiple grounds absent an explanation. As such, it is crucial to address redundancy to avoid the PTAB inadvertently picking a less preferred ground.

5.  Failure to Recognize the Importance of the 12 Month Window

While not a drafting mistake per se, the last mistake is one of timing. Petitioners have 12 months to file a petition for IPR from the time of being served with a complaint for infringement of the subject patent. Filings made outside this window are time barred. While this limited window would seem straight forward to track, large manufacturers need to be especially mindful of their supply chain and/or customers that are sued on the same patent at an earlier point in time. In some IPR filings, privity between businesses, indemnification obligations, corporate relationships, and the like could trigger the start of the window prior to a complaint being lodged against the parent company. This is because 35 USC 315 (b) extends to service of a complaint on a petitioner, real-party-in-interest or privy of the petitioner

Moreover, even when within the window, waiting to file beyond the 6 month mark means that there will be no second chance if a petition is ineffective due to one or more of the presentation mistakes noted above. Keep in mind that it takes 5-6 months from petition filing to receive the Trial Order.

District 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.

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.

Raising 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.

As made clear in IPR2013-00020 (here), the USPTO provides a period by which such evidentiary defects can be remedied by a petitioner post-institution. So, disputing such issues via pre-institution motion, or in a preliminary response is fruitless.

When a party objects to evidence that was submitted during a preliminary proceeding, such an objection must be served within ten business days of the institution of trial. The objection to the evidence must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence. This process allows the party relying on the evidence to which an objection is timely served, the opportunity to correct, by serving supplemental evidence within so many days of the service of the objection. See, 37 CFR 42.64(b)(1) and (b)(2). If, upon receiving the supplemental evidence, the opposing party is still of the opinion that the evidence is inadmissible, the opposing party may file a motion to exclude such evidence.  . . .

[Petitioner’s] “motion to exclude” [prior to institution] is premature and also prevents [patentee] from correcting as permitted by the rules. If a trial is instituted, [petitioner] will have full opportunity to object, serve, reconsider any supplemental evidence and finally file a motion to exclude evidence.

(emphasis added)

Of course, while such printed publications need not be authenticated for the purpose of the petition review, best practices dictate that authentication be provided to avoid wasteful jousting on admissability post-institution.

PTAB’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)

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.