The Board is Conservative in Authorizing Additional Discovery


In ACCO Brands Corporation v. Fellowes, Inc., IPR2013-00566, Paper 16 (April 18, 2014), Fellowes sought additional discovery related to secondary considerations.  The Board denied the discovery, explaining:

The legislative history of the AIA makes clear that additional discovery 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).

The Board also pointed out that the statutory standard for permitting additional discovery is “necessary in the interest of justice.” 35 U.S.C. § 316(a)(5).  Finally, pointing out that there is a one-year statutory deadline for completion of inter partes review, the Board said that given the statutory deadlines imposed by Congress and with the limited nature of additional discovery in inter partes review proceedings, the Board will be conservative in authorizing additional discovery, citing154 Cong. Rec. S9988-89 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl) (“Given the time deadlines imposed on these proceedings, it is anticipated that, regardless of the standards imposed in [sections 316 and 326], PTO will be conservative in its grants of discovery.”)

Topics:  Discrimination, Patent Litigation, Patent Trial and Appeal Board, Patents

Published In: Civil Procedure Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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