News & Analysis as of

Garmin Factors Discovery

Jones Day

Motion for Additional Discovery Based on Unraised Arguments Denied

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The Patent Trial and Appeal Board (“PTAB”) recently denied a Petitioner’s Motion for Additional Discovery. Scientific Design Co., Inc. v. Shell Oil Co., IPR2021-01537, Paper 18 (PTAB Aug. 12, 2022). In an inter partes review...more

Jones Day

Discovery Request Seeking Deposition Preparation Materials Denied

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The Patent Trial and Appeal Board (“PTAB”) recently denied a Motion for Additional Discovery because the movant could not prove beyond mere speculation that the requested documents would be useful to show witness scripting....more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #9 for Surviving an Instituted IPR: Issues Warranting Limited Additional Discovery

In our previous post we started talking about discovery procedures in inter partes review (“IPR”) proceedings under 37 CFR § 42.51 and, in particular, the scope and timing of seeking limited additional discovery under Rule...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #8 for Surviving an Instituted IPR: Additional Discovery is Possible, but Should be Carefully Planned

Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. There are three types of discovery at the Patent Trial...more

Jones Day

In Your Dreams – Additional PTAB Discovery Remains Elusive

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Discovery in an IPR proceeding is limited compared to district court litigation in order to focus the proceedings and promote speed and efficiency. The PTAB Practice Guide and 37 C.F.R 42.51 provide for three types of...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Discovery Requests Targeting Objective Evidence of Nonobviousness Denied Under Garmin Framework

The Patent Trial and Appeal Board denied a patent owner’s motion for additional discovery of documents—from petitioners, real parties-in-interest, and third parties—because patent owner failed to show that such discovery...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Orders Production of Raw Data and Instructions Underlying Test Results

The Patent Trial and Appeal Board (PTAB) recently issued an Order that illustrates the circumstances in which a party may obtain additional discovery in an inter partes review (IPR). In Apple Inc. v. Singapore Asahi Chemical...more

Jones Day

Trial Practice Guide Updates – Discovery, Testimony, Motions to Amend, and Joinder

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Our prior post on the PTAB’s second update to the AIA Trial Practice Guide (TPG), published July 15, 2019, highlighted the additional guidance provided for petitions, patent owner preliminary responses and claim construction....more

Jones Day

PTAB Orders Petitioner’s Expert to Produce Discovery

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The PTAB recently granted a Patent Owner’s motion to take additional discovery of Petitioner’s expert. In particular, the PTAB ordered Petitioner’s expert to produce documents that identify materials he reviewed in preparing...more

Jones Day

Board Grants Discovery Regarding RPI Issues

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In Cavium, LLC v. Alacritech, Inc., Case IPR2018-00401 (PTAB Nov. 20, 2018) (Paper 24), the PTAB granted a Patent Owner’s motion for additional discovery relating to real party-in-interest. The split-panel decision is...more

Jones Day

PTAB Grants Rare Motion for Additional Discovery

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The PTAB recently granted a rare motion for additional discovery into the question of whether an unnamed party, Amneal Pharmaceuticals, LLC (“Amneal”), should have been named as a real-party-in-interest. In Kashiv LLC v....more

Akin Gump Strauss Hauer & Feld LLP

PTAB Grants Limited Alternative to Overbroad and Delayed Additional Discovery Requests in IPR

The Patent Trial and Appeal Board (“PTAB”) granted-in-part Patent Owner Twilio Inc.’s motion for additional discovery pursuant to 37 C.F.R. § 42.51(b)(2). Though the “Patent Owner delayed in seeking the requested discovery”...more

Jones Day

Additional Discovery: Must Be More Than Mere Possibility

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The PTAB recently denied a motion for additional discovery that sought the production of documents argued to be relevant to inventorship. In Watson Laboratories, Inc. v. United Therapeutics, Corp., Case IPR2017-01621 and...more

WilmerHale

Real Parties-in-Interest Discovery In Post-Grant Proceedings

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The America Invents Act of 2011 requires petitioners in post-grant proceedings—including in all inter partes reviews (IPRs) and covered business method (CBM) reviews—to identify each ‘‘real party-in-interest’’ (i.e., ‘‘the...more

Foley & Lardner LLP

PTAB Grants Rare Request for Additional Discovery In IPR

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In Mylan v. Allergan (IPR2016-00127, Paper No. 73), the PTAB granted a rare request for discovery filed be Petitioner in response to summaries of data presented in a Patent Owner Response used to rebut obviousness. In...more

Jones Day

Unmet Garmin Factor 3 Proves Fatal for Additional Discovery Request

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In Polygroup Ltd. v. Willis Electric Co., Ltd., the Patent Trial and Appeal Board denied a Patent Owner request for documents already provided in a co-pending lawsuit but restricted from use by a protective order....more

McDermott Will & Emery

Third Party Subpoena Permitted in IPR - Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC

After briefing on the Garmin factors to determine if additional discovery was “necessary in the interest of justice” during an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) granted the patent...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Holds a Firm Line on Additional Discovery

When Congress created the Inter Partes Review (“IPR”) and Covered Business Method (“CBM”) review procedures for challenging the validity of an issued patent, it was intended for these processes to be quicker and more...more

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