PTAB Discovery of Secondary Considerations of Non-obviousness: How to Get Necessary Prior Authorization

by Robins Kaplan LLP

Discovery limitations play an important role in the differences between district court patent litigation and actions at the U.S. Patent Trial and Appeal Board (PTAB). So far, the PTAB has placed significant restrictions on discovery in inter partes (“IPR”) and covered business method patent (“CBM”) reviews.

Yet, discovery could be critical to making a non-obviousness argument. Obtaining discovery demands that parties obtain prior authorization from the PTAB to file a written motion for discovery. Only then will the PTAB consider the other factors that control discovery of secondary considerations of non-obviousness. 

The why and when of obtaining prior authorization

In most instances, PTAB rules require prior authorization before the filing of discovery motions. See 37 C.R.F. § 42.20(b); Markets-Alert, Case No. CBM2013–00005, Paper No. 27 at 3 (PTAB May 17, 2013) (expunging papers and exhibits requesting authorization to file a motion for discovery made without prior authorization).  Exceptions include routine discovery involving production of “relevant information that is inconsistent with a position advanced by the party during the proceeding.” In those circumstances, parties do not need to file a motion to obtain the information. Markets-Alert, Paper No. 27 at 2. Similarly, if the parties have agreed to provide mandatory initial disclosures pursuant to 37 CFR 42.5(1), then a party may obtain that discovery without seeking permission. Id. at 3.

But, if the parties have not agreed to make mandatory initial disclosures, the PTAB will view any request for initial disclosures as a request for additional discovery pursuant to Rule 42.51(b)(2). (Any party having information relating to secondary considerations should think twice before agreeing to make these initial disclosures.) In those circumstances, the PTAB will require the requestor to first seek prior authorization for a motion seeking discovery. Markets-Alert, Paper No. 27 at 3.

Typically, a party requests prior authorization during a teleconference with the PTAB and opposing counsel. See, e.g., Google Inc. v. Jongerius Panoramic Techs. LLC, IPR2013–00191, Paper No. 19 at 2 (PTAB Sept. 13, 2013). The PTAB does not allow ex parte requests. Rule 42.5(d). Also, the PTAB encourages parties to confer before the teleconference. Rule 42.51(b)(2)(i) (“The parties may agree to additional discovery between themselves. Where the parties fail to agree, a party may move for additional discovery.”); Schott Gemtron Co., Inc. v. SSW Holding Co, Inc., IPR2013–00358, Paper No. 17 at 3 (PTAB Nov. 26, 2013) (encouraging parties who had been discussing discovery to keep talking, then request a second teleconference with the PTAB if they fail to agree).

Required showing to win prior authorization

[G]ood cause and interests-of-justice are closely related standards, but on balance, the interests-of-justice standard is a slightly higher standard than good cause. While a good cause standard requires a party to show a specific factual reason to justify the needed discovery, interests-of-justice would mean that the Board would look at all relevant factors. The interests-of-justice standard covers considerably more than the good cause standard, and in using such a standard the Board will attempt to consider whether the additional discovery is necessary in light of ‘the totality of the relevant circumstances.

77 FR 48679, 48693 (Aug. 14, 2012).

Meeting the applicable discovery standard

Despite the different discovery standards, the PTAB considers the same five factors in evaluating discovery requests in both IPRs and CBMs. The five factors are:

  1. More than a possibility and mere allegation
  2. Litigation position and underlying basis
  3. Ability to generate equivalent information by other means
  4. Easily understandable instructions
  5. Requests not overly burdensome to answer

Garmin, Paper No. 26 at 6–7; Markets-Alerts, Paper No. 32 at 5. Typically, parties have the most trouble with Factors 1, 3, and 5 in the teleconference. Decisions to-date offer some guidance on what does—and does not—satisfy those problematic factors.

Factor 1—Speculative

The obstacles Factor 1 present occur because the requesting party frequently has trouble showing beyond mere possibility that responsive information exists.  For example, in Tandus v. Interface, Inc., IPR2013–00333, Paper No. 30 at 3 (PTAB Feb. 3, 2014), the patent owner explained to the PTAB during a teleconference that it sought discovery into petitioner’s alleged copying of the patented invention and long-felt need and said that relevant information “might exist.” The PTAB denied patent owner’s request to file a motion seeking discovery, as “a party requesting discovery must already possess evidence tending to show beyond speculation that something useful will be discovered.” Id. Further, the PTAB noted, “during the conference, Patent Owner was unable to provide any more specific basis for its discovery requests and was unable to identify a specific document it seeks to discover.” Id.1

Conversely, Smith & Nephew, Inc. v. ConvaTec Techs., Inc. illustrates how a patent holder met the requirements of Factor 1 and won prior authorization to seek discovery. IPR2013–00102, Paper No. 13 at 5 (PTAB July 3, 2013). In Smith & Nephew, the patent owner’s belief that petitioner had copied its patented invention arose from discovery in concurrent litigation. As a result, the patent holder’s discovery request showed “more than a possibility and mere allegation.” Id. at 3. Similarly, in Schott Gemtron v. SSW Holding Co., IPR 2013–00358, Paper No. 28 (PTAB Jan. 13, 2014), the patent owner used its own knowledge of petitioner’s sales volume to justify filing a motion concerning commercial success. Id. at 3.2

Factor 3—Available Elsewhere

The decision in Zodiac Pool Sys., Inc. v. Aqua Products, Inc., shows the problems Factor 3 can cause.  In Zodiac Pool, the PTAB denied discovery of communications between the parties because the “Patent Owner fail[ed] to demonstrate why the requested information could not be figured out or assembled from internal sources.” IPR2013–00159, Paper No. 26 at 7 (PTAB Oct. 18, 2013). Similarly, the PTAB has cautioned, “a request should not encompass publicly available information that the party has the ability to obtain without the need for discovery.” Apple Inc. v. SightSound Techs., LLC, CBM2013–00020, Paper No. 24 at 3 (PTAB Nov. 13, 2013).

Factor 5—Burdensome

A party seeking discovery may also lose at the teleconference stage if its request might prove unduly burdensome. Schott Gemtron, Paper No. 28at 4; Tandus, Paper No. 30 at 3. For example, in Schott Gemtron, the PTAB found that a lack of specificity in the patent holder’s requests would create “unjustified burden” on the other party. Id.


 In most cases, a party must obtain prior authorization from the PTAB to discover secondary considerations of non-obviousness. Given the PTAB’s high kill rate, patent owners should pay close attention to the PTAB guidance on the factors that most impact prior authorization. That advice makes clear that discovery outcomes often hinge on the success—or failure—of the requesting party’s preparation and persuasiveness at the phone conference. To come out of that conference with an order for discovery, a party should carefully craft its discovery request, focus on information that only the opposing party possesses and avoid any suggestion that the request constitutes a fishing expedition.

1 See also St. Jude Medical v. The Board of Regents of the Univ. of Michigan, IPR2013–00041, Paper No. 20 at 3 (PTAB July 31, 2013) (Prior authorization denied because movant’s showing was mere speculation).

2 With respect to six other categories of documents concerning copying, however, the PTAB found the request to be based on mere possibility or speculation. As a result, briefing concerning those requests was not authorized. Schott Gemtron v. SSW Holding Co., IPR 2013–00358, Paper No. 28 at 4 (PTAB Jan. 13, 2014).

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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