USPTO Inter Partes Review Update: Scope of Discovery

by Orrick, Herrington & Sutcliffe LLP
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In Garmin Int’l Inc. v. Cuozzo Speed Technologies, LLC, Case No. IPR2012-00001 (PTAB March 5, 2013), the USPTO recently issued its first-ever substantive ruling on a motion for additional discovery in an Inter Partes review proceeding. This ruling (denying the motion) begins to shed some light on how the Board will apply the discovery rules for these new review proceedings.

This ruling makes clear the Board intends to limit discovery more strictly than do the federal courts. The PTO permits two types of discovery: "routine" and "additional." "Routine discovery" is limited to exhibits cited in a paper or testimony, cross-examination of declarants, and information inconsistent with a position the party advanced in the proceeding. 37 C.F.R. 42.51(b)(1). "Additional discovery" is that which is "necessary in the interests of justice." 35 U.S.C. 316(a)(5). Routine discovery may be taken as a matter of right, but additional discovery requires Board approval.

Here, the patentee first argued that all of its requests were routine, because they merely sought discovery about inconsistent positions. The Board held the requests were not routine, because they were not narrowly directed to information known to the petitioner to be inconsistent with positions taken in the petition. They were instead broadly directed at general categories of information that could include, but were not limited to, discovery about inconsistent positions.

The Board applied a five-factor test for determining whether to permit additional discovery:

  1. More than a possibility and a mere allegation: The party seeking discovery should already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered by the requested discovery. If not, the discovery will not be permitted.
  2. Litigation positions and underlying basis: Requests in the form of contention interrogatories are not necessary in the interests of justice and will not be permitted.
  3. Ability to generate equivalent information by other means: If the requesting party has other ways of obtaining the information, the discovery is not necessary in the interest of justice, and will not be allowed.
  4. Easily understandable instructions: Discovery questions should be easily understandable. Therefore, complex instructions accompanying discovery likely show that the questions are prima facie unclear and are unlikely to be permitted.
  5. Requests not overly burdensome to answer: Given the expedited nature of the proceedings, the requests should be sensible and responsibly tailored according to a genuine need. Failing that, the Board will not allow them.

In the Garmin case, the patentee sought information relating to secondary considerations of non-obviousness, including substantial information about the petitioner’s products (allegedly relevant to copying, failure of others, long-felt need and commercial success). Relying heavily on the first factor, the Board denied all of the patentee’s discovery requests. The Board held the patentee must already have gathered some evidence (or at least provided a reasoned explanation) that the petitioner’s documents (or interrogatory responses) likely would provide the underlying evidence of non-obviousness. Since the patentee had not provided such evidence or explanation, there was an insufficient showing that the discovery was "necessary in the interests of justice."

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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