Discovery may perhaps be one of the most difficult items for clients, lawyers, and their adversaries alike to deal with, particularly in patent litigation. In its newly issued rules for trial proceedings before the Patent Trial & Appeal Board (“the PTAB”), the U.S. Patent and Trademark Office has attempted to strike a better balance between disclosure of the information needed to properly prepare for and litigate the proceeding, and the costs of obtaining and exchanging such information.

In traditional U.S. District Court litigation, it is difficult to predict the scope of discovery, the volume of documents/information to be dealt with, and the number of custodians/witnesses at the very outset of the case. This in turn injects a high degree of uncertainty into the case, particularly when setting early budget discussions and case estimates. The nature of a patent case only exacerbates this problem, as the issues touch upon many aspects of a company’s operations: product development, manufacturing, marketing and sales, finance, etc. Conversely, in the existing inter partes reexamination proceedings before the USPTO, no discovery was available at all. While this kept costs down, the level of information exchanged was at a bare minimum, and limited to whatever the parties themselves could find on their own and chose to include in their respective filings. Although the costs were dramatically lower, the fact that: (i) declarant testimony could be filed without the scrutiny of cross-examination; and (ii) documents revealing inconsistencies need not be produced, were viewed as significant shortcomings of inter partes reexamination proceedings.

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