PTAB Offers Guidance Regarding Discovery in Inter Partes Reviews

iStock_000013492145XSmallStill confused about how much discovery you will be able to obtain in an IPR? Fear not, as two of the PTAB’s Administrative Patent Judges have weighed in with a primer on inter partes review discovery. The PTAB blog entry provides a nice overview of “routine” and “additional” discovery, including some insights into the reasons why the Board believes it is constrained in its grant of additional discovery in IPR proceedings.

To that end, as our statistics have made clear, only 28% of Motions for Additional Discovery have been granted through the 2nd year anniversary of IPR practice. Of note in the PTAB’s blog posting is that this low percentage is due to several key constraining forces on the Board. First, the AIA legislative history makes clear that additional discovery is confined to “particular limited situations, such as minor discovery that PTO finds to be routinely useful, or to discovery that is justified by special circumstances of the case.” Second, statutory deadlines for completing IPR proceedings require a much more streamlined procedure than the broad discovery allowed in litigation. Third, the Board notes the fact that discovery is only allowed when in the “interests of justice.” Because this standard is slightly higher than the “good cause” standard, the Board is more constrained on this issue than on other issues it is called on to decide.

Lastly, the article provides a helpful synopsis of a number of other PTAB decisions relating to additional discovery that can be a helpful reference.

Communications Between Experts not “Routine” Discovery in Inter Partes Review Proceedings

iStock_000013492145XSmallThe Board’s views on the metes and bounds of discovery in inter partes review proceedings continue to take shape with each new decision.  In Apple, Inc. v. Achates Reference Publishing, Inc., IPR2013-00080 and 00081 (Paper 49) (December 23, 2013), the Board considered the issue of whether emails exchanged between two expert witnesses for a party are “routine” discovery.

More specifically, in the depositions of Patent Owner’s two expert witnesses, testimony came to light that suggested that the experts each relied upon communications from the other in forming their opinions submitted in the proceeding.  As such, Petitioner called for a conference call with the Board to seek production of the emails as “routine” discovery pursuant to 37 CFR § 42.51(b)(1).  To further consider the issue, the Board instructed the parties to submit the relevant deposition testimony.

Upon consideration of that testimony, and the parties’ arguments, the Board declined to consider the email exchange “routine” discovery. It did, however, grant Petitioner authorization to file a motion for additional discovery, directing Petitioner to the now ubiquitous Garmin decision, that governs motions for additional discovery.