The AIA provides an opportunity for limited discovery in the new Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Methods (CBM) proceedings.  The USPTO has set a “good cause” standard for additional discovery in CBMs and PGRs  (37 CFR 42.224(a)), and, according to the PTAB, a slightly higher “interest of justice” standard for IPR’s (37 CFR 42.51(b)(2)(i)).  To date, the PTAB has been very hesitant to grant document discovery in any such IPR/CBM/PGR proceeding.  

However, the PTAB recently granted limited document discovery to the Patent Owner in CBM2013-00005.  The Patent Owner requested all documents considered by Petitioner’s expert declarant in preparing his declaration.  The Patent Owner argued that statements in Petitioner’s expert declaration made factual assertions not supported by documents cited in the declaration, and, as a result, the expert likely relied on additional, uncited evidence.

The PTAB agreed with the Patent Owner that there was good cause for additional discovery of all documents considered by Petitioner’s expert declarant in preparing his declaration.  However, the PTAB considered the Patent Owner’s requested discovery instructions to be overly broad.  As a result, instead of adopting the Patent Owner’s instructions, the PTAB instructed that discovery would be limited to “all documents … considered by [the expert] … but only to the extent of [the expert]’s recollection.”  Thus, even in granting document discovery in this instance, the PTAB continues to keep the scope of document discovery limited.

Read the full notice here.