Among the main attractions of the new Inter Partes Review (IPR) and Post Grant Review (PGR) proceedings are their psuedo-litigation features. Included among those key features is the ability to take discovery from the opposing party. As compared to previous attempts by Congress to create cost-effective Patent Office proceedings for challenging the validity of patents, discovery helps make it less worrisome for patent challengers to submit prior art to the Patent Office for consideration. That is, patent challengers can feel more comfortable that they will remain in control of their prior art in the IPR and PGR as compared to previous proceedings where such control can be lost. While we previously discussed “Mandatory Initial Disclosures,” this article focuses on discovery provisions from the America Invents Act that allow for obtaining documents and testimony from third parties in inter partes review and post grant review proceedings via “Compelled Discovery,” as oultined in 37 C.F.R. §42.52.
Since 1861, provisions allowing the Patent Office to issue subpoenas compelling the testimony or documents from entities, in “contested cases,” has been part of the Patent Act in 35 U.S.C. §24. While this provision was previously used in interferences or displinary proceedings, it is clear that Inter Partes Review and Post Grant Review are to be considered “contested cases,” opening up the subpoena power to IPR/PGR litigants.
The proper procedure for invoking this subpoena power is to make a “Motion for Authorization” to the Patent Trial and Appeal Board (PTAB) seeking the discovery. Of course, the PTAB is going to be interested in learning the relevance of the discovery and any such motion must identify the prospective witness by name or title and, if document production is requested, the nature of the document must be described. As a reminder, the Office Trial Practice Guide encourages that any motion a party may seek to make in the trial be raised at the joint conference call between the parties and the Administrative Law Judge handling the trial, that call being set to occur within 1 month after the PTAB decides to institute a trial (p48765).
Testimony and documents from outside the United States may also be compelled, but additional requirements must be set forth in the Motion for Authorization.
In the case of ex-US testimony, the Motion for Authorization must include:
1. Identification of the Foreign Country
2. An explanation as to why the witness can be compelled to testify in the foreign country, which must include, (1) a description of the procedures which will be used to compel the testimony and (2) an estimate of the time it is expected to take the testimony
3. A demonstration that the Party has made reasonable efforts, including an offer to pay for travel arrangements and associated expenses, to secure agreement of the witness to testify in the United States but has been unsuccessful.
In the case of ex-US production of documents, the Motion for Authorization must include:
1. Identification of the Foreign Country
2. An explanation as to why production of the document can be compelled, which must include, (1) a description of the procedures which will be used to compel production and (2) an estimate of the time it is expected to obtain production
3. A demonstration that the Party has made reasonable efforts, including an offer to pay for associated expenses, to secure agreement to produce the document or thing from the individual or entity having possession, custody or control of the document or thing in United States but has been unsuccessful.
To help gauge the likelihood of the PTAB granting a Motion for Authorization, it is important to keep in mind the Patent Office’s concern regarding excessive costs. Throughout the Patent Office’s commentary on the rule, the need to minimize costs in these proceedings is mentioned often. A Motion for Authorization should, therefore, thoroughly explain the disccovery that is sought, the reasons why it is crucial to the proceeding, and why it cannot be obtained through less expensive, less obtrusive means. This is not to say, however, that the PTAB will look unfavorably upon these motions – though the Patent Office wants to minimize the high costs and significant time associated with discovery, compelled discovery is a significant part of the discovery process in Inter Partes Review and Post Grant Review and should be used as necessary to obtain third party testimony and documents.