Limited Experiment Protocol Discovery Granted

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[co-author: Paxton Lozano]*

In an inter partes review (IPR), the scope of discovery is expressly stated in the C.F.R. and additional discovery must either be agreed upon by the parties or granted by the Board when it “is necessary in the interest of justice.” C.F.R. § 42.51(b). The movant bears the burden of demonstrating additional discovery is needed. When addressing this issue, the Patent Trial and Appeal Board (PTAB) considers the five Garmin factors: (1) whether there exists more than a possibility and mere allegation that something useful will be discovered; (2) whether the requests seek the other party’s litigation positions and the underlying basis for those positions; (3) whether the moving party has the ability to generate equivalent information by other means; (4) whether the moving party has provided easily understandable instructions; and (5) whether the requests are overly burdensome. Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 6–7 (PTAB Mar. 5, 2013).

In Tennant Co. v. Oxygenator Water Technologies, Inc., IPR2021-00625, Paper 30 (PTAB Oct. 18, 2021), the Patent Owner sought additional discovery related to Petitioner’s declarant who submit testimony in this proceeding. Specifically, Patent Owner requested additional discovery on four topics. The Board weighed the five Garmin factors and determined, in the interest of justice, the movant met its burden and additional discovery will be allowed for two of the four requested topics.

Factor one focuses on whether the movant can show that additional discovery will be useful, meaning favorable in substantive value and not merely admissible or relevant. In Tennant, the Board found additional testimony that inquired about facts, such as prior art references, that a declarant considered in preparing his testimony within the rules and useful in conducting a cross-examination. However, with respect to discovery pertaining to advice provided to the declarant, the Board determined additional discovery was not permitted because Patent Owner did not provide a basis that such advise existed. Although Federal Rule of Civil Procedure 26(b)(4) does not apply to these proceedings, the determination not to allow such discovery is consistent with the Board’s decision. Patent Owner’s request exceeds the limit of Rule 26 and for that reason, the Board found the request to be too broad and not within the interest of justice.

Factor two focuses on whether the moving party is seeking the other party’s litigation positions. In Tennant, two of the four requests seek information the declarant considered in constructing and testing his reproductions for the IPR. The Board deemed these requests fair because Petitioner submitted these restrictions as part of its case-in-chief. However, with respect to the requests seeking information of the advice/instruction given to the declarant, the Board repeated that this request was beyond the scope of its rules.

Factor three focuses on the ability to generate equivalent information and information that can be easily assembled or figure out without a discovery request is not within the interest of justice. In Tennant, the Board agrees that Patent Owner could not easily generate information on the additional experiments the declarant performed.

Factor four focuses on the additional discovery being easily understandable. The Board agrees with Patent Owner that the requests seeking the protocols and data the declarant used in forming his opinion are easily understandable.

The last factor focuses on whether the requests are overly burdensome including financial burden, human resources burden, and/or the burden on meeting the time schedule. In Tennant, the Board determined the protocols and date used by the declarant are not burdensome because they are limited in scope. However, with respect to the requests seeking information about alleged advice/instruction, the Board determined complying with these requests would not be burdensome, but would divulge privilege information.

Takeaway

A request for additional discovery can be a useful tool during an IPR proceeding. As shown here, requests for what prior art a declarant relies on, the protocols the declarant uses, and the data the declarant’s reproduction produced can be discoverable so long as there is useful basis for this information. However, information seeking to discover advice/instruction given to a declarant may not be discoverable due to its privileged nature.

*Paxton is a member of the New Lawyer’s Group in Jones Day’s Chicago Office.

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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