The addition of discovery to review proceedings before the Patent Trial and Appeal Board (PTAB), such as inter partes review, and post-grant review, have opened up the doors to new kind of challenges before the PTO.  However, attempting to receive additional discovery beyond that required by the rules in proceedings before the PTAB is not as easy as in District Court litigation.  In post-grant and inter partes proceedings, 37 C.F.R. §42.51(b)(2) provides the rules for additional discovery: parties are given the option to agree to additional discovery between themselves, and if they are unable to do so, the moving party must present a reasoning to the PTAB as to why the additional discovery is necessary “in the interests of justice.”  In post-grant reviews, the moving party is restricted even more because it must show that the additional evidence is directly related to factual assertions advanced by either party in the proceeding (See 37 C.F.R. §42.224).

In the February 9, 2012 comments provided when implementing the new rules under the America Invents Act (AIA), the USPTO stated that it wished to curb the amount of additional discovery by requiring a higher “interests of justice” standard, which is consistent with considerations identified in 35 U.S.C. §316(b), including the efficient administration of the PTAB and the PTAB’s ability to complete timely trials.  The USPTO noted that additional discovery increases trial costs and increases the expenditures of time by the parties and the PTAB, and because a large number of PTAB proceedings will revolve around the specification of a patent application and publicly available prior art, instances where additional discovery would be necessary should be infrequent.

Fortunately, the PTAB has provided guidance in the case of Garmin International, Inc. v. Cuozzo Speed Technologies LLC., Notice 20, IPR2012-00001 (PTAB 2/14/2013).  In Garmin, patent owner Cuozzo filed a motion for additional discovery related to an assertion nonobviousness on the grounds of secondary considerations.  In response to the motion, the PTAB provided five factors it considered important in deciding whether to grant a motion for additional discovery in an IPR proceeding that would be “in the interests of justice”:

  1. More than a possibility and mere allegation: The mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient to demonstrate that the requested discovery is necessary in the interest of justice.  The party requesting discovery should already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered.
  2. Litigation positions and underlying basis: Asking for the other party’s litigation positions and the underlying basis for those positions is not necessary in the interest of justice.  The Board has established rules for the presentation of arguments and evidence.  There is a proper time and place for each party to make its presentation.  A party may not attempt to alter the Board’s trial procedures under the pretext of discovery.
  3. Ability to generate equivalent information by other means: Information a party can reasonably figure out or assemble without a discovery request would not be in the interest of justice to have produced by the other party.  In that connection, the Board would want to know the ability of the requesting party to generate the requested information without need of discovery.
  4. Easily understandable instructions: The questions should be easily understandable.  For example, ten pages of complex instructions for answering questions is prima facie unclear.  Such instructions are counter-productive and tend to undermine the responder’s ability to answer efficiently, accurately, and confidently.
  5. Requests not overly burdensome to answer: The requests must not be overly burdensome to answer, given the expedited nature of Inter Partes Review.  The burden includes financial burden, burden on human resources, and burden on meeting the time schedule of Inter Partes Review.  Requests should be sensible and responsibly tailored according to a genuine need.

The PTAB ultimately denied the request for additional discovery because the movant did not provide sufficient arguments within the bounds of the five factors that additional discovery would be in the interests of justice.

Thus, the parties involved in a dispute before the PTAB would be urged to come to an agreement on additional discovery items between themselves.  Failing to do so, a movant for additional discovery may have to fight an uphill battle to provide a convincing argument within the bounds of the five factors to get a motion for additional discovery granted, as the PTAB has inferred that most requests likely will not be within the “interests of justice” standard.