March 2016

Inter Partes Review Additional Discovery: When, What, and How Much

4 min

AIA Patent Trial and Appeal Board (PTAB) proceedings potentially involve three categories of limited discovery: (1) mandatory initial disclosures; (2) routine discovery; and (3) additional discovery. 37 C.F.R. § 42.51. Pursuant to 37 C.F.R. § 42.51(b)(2)(i), when one party refuses to provide additional discovery, the other party may file a motion with the Board requesting such.

The AIA legislative history states that additional discovery requests should be confined to "particular limited situations, such as minor discovery that PTO finds to be routinely useful, or to discovery that is justified by the special circumstances of the case." 154 Cong. Rec. S9988-89 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl).

In light of this legislative history and statutory deadlines, the Board is conservative in authorizing additional discovery in Inter Partes Review (IPR) proceedings and applies an "interests of justice" standard when deciding such. The five factors the Board uses to determine whether additional discovery in an IPR is "necessary in the interest of justice" were outlined in the Garmin case. Garmin Int'l, Inc. v. Cuozzo Speed Tech. L.L.C., IPR2012-00001, Paper 26 (P.T.A.B. Mar. 5, 2013):

  1. More Than a Possibility and Mere Allegation. "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 necessarily in the interest of justice."
  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."
  4. Easily Understandable Instructions. "The requests themselves should be easily understandable."
  5. Requests Not Overly Burdensome to Answer. "The requests should 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." Id. at 6-7.

In the three years since Garmin, Board decisions suggest that parties continue to struggle to successfully navigate the PTAB's requirements for a motion for additional discovery. Notably, requesting sensible and responsibly tailored discovery requests on a timely basis is still of the upmost importance.

Capioncall, L.L.C. v. Ultratec, Inc., IPR2015-00636 and IPR2015-00637, Paper 20 (P.T.A.B. Jan. 26, 2016)

  • Denying a request for draft claim charts relied on by Petitioner's Declarant because Patent Owner's request for authorization two months after learning the additional discovery existed was untimely. And only one day had passed between when Petitioner's Declarant signed his declaration and the date on which the Petitions were filed, which suggested a mere possibility that something useful would be discovered.

TRW Automotive U.S. LLC v. Magna Electronics Inc., IPR2015-00436, Paper 27 (P.T.A.B. Jan. 15, 2016)

  • Denying a request for authorization to file a discovery motion because Petitioner did not explain sufficiently how the additional documents it sought would produce something useful.

The Mangrove Partners Master Fund, LTD v. VirnetX Inc., IPR2015-01046, Paper 25 (P.T.A.B. Dec. 21, 2015)

  • Denying additional discovery to show whether additional party should be named as a real party in interest, because the Patent Owner merely alleged that funds from a hedge fund were being used in the proceeding, which was insufficient to constitute more than a mere possibility that something useful would be discovered.

K.J. Pretech Co., LTD v. Innovative Display Techs. LLC, IPR2015-01866, IPR2015-01867, and IPR2015-01868, Paper 6 (P.T.A.B. Nov. 20, 2015)

  • Granting Patent Owner's request for authorization to file a discovery motion for additional discovery limited to the issue of whether Petitioner and two third parties are privies. Patent Owner learned in a related district court litigation, to which Petitioner was not a party, of evidence of a supply agreement between Petitioner and the third parties that may contain indemnification obligations.

RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, IPR2015-01751, and IPR2015-01752, Paper 11 (P.T.A.B. Oct. 20, 2015)

  • Granting Patent Owner's motion for additional discovery from Petitioner to determine whether a third party should have been identified as a real party in interest, because Petitioner's business model implied that Petitioner may act as an agent or proxy for third parties; the third party is a client of Petitioner; Petitioner and the third party share a common member on their respective boards of directors; and the third party was time-barred under 35 U.S.C. § 315(b) from filing a petition for Inter Partes Review because the Patent Owner served a complaint for infringement of the patents in suit on the third party more than one year prior to the filing date of the petition.