This article was reprinted with permission from Law360.
The Patent Trial and Appeal Board’s rules allow parties to request discovery in inter partes review proceedings. In light of the strict standard for authorizing “additional discovery,” these requests are granted in very limited circumstances. Generally, the PTAB has been reluctant to grant motions for discovery on issues such as secondary considerations. This trend may be shifting. In several recent decisions discussed below, the PTAB has authorized additional discovery concerning secondary considerations issues.