Discovery is limited in AIA trials, as compared to district court and ITC litigation. There is automatic deposition of witnesses submitting declarations or affidavits, and automatic discovery of contradictory evidence. Additional discovery must be requested by motion and demonstrated to be “in the interest of justice” for IPR proceedings. For CBM or PGR proceedings, the proponent for such additional discovery must show “good cause,” and the additional discovery is limited to evidence directly related to a factual assertion of the opposing party. 35 U.S.C. §§ 316(a)(5) and 326(a)(5); 37 C.F.R. § 42.51.
Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper No. 26 (PTAB, Mar. 5, 2013) (precedential). The Board provided guidance on the requirements for requesting discovery. The Board indicated that the following five factors are considered in determining whether a discovery request meets the required “in the interest of justice” standard. (1) 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. (2) Asking for the other party’s litigation positions and the underlying basis for those positions is not necessary in the interest of justice. (3) 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. (4) The questions should be easily understandable. (5) The requests must not be overly burdensome to answer, given the expedited nature of IPR.
Bloomberg Inc. et al. v. Markets-Alert Pty Ltd., CBM2013-00005, Paper 32 (PTAB May 29, 2013) (precedential). The Board noted that in IPRs, an interests of justice standard is employed in granting additional discovery. In PGRs and CBMS, a good cause standard is applied. On balance, the interests of justice standard is slightly higher than the good cause standard, to reflect that the scope of issues which could be raised by a petitioner in an IPR is limited to grounds based on patents or printed publications. In this order, the Board adopted the Garmin discovery factors (1)-(5) for PGR and CBM proceedings, noting that the Board slightly modifies each of the five factors set forth in Garmin, for determining whether requested discovery is necessary for good cause.
Apple Inc. v. Achates Reference Publishing, Inc., IPR2013-00080, Paper 66 (PTAB Jan. 31, 2014). The Board authorized petitioner’s motion for additional discovery directed to emails exchanged between patent owner’s declarants. With its response, patent owner submitted declarations from two declarants who stated that they relied on the other individual’s declaration with respect to prior art references at issue in the proceeding. During cross-examination, the declarants indicated that they relied on email communications with the other individual in forming their opinions regarding the alleged patentability of the claims over that prior art. The Board authorized petitioner’s motion, finding that the testimony indicates more than a mere possibility that something useful will be discovered, and that petitioner’s request is narrowly tailored and not overly burdensome. Determining the factual basis for a declarant’s opinions is a proper inquiry during discovery, and permitting an opposing party to do so is important to ensure the party has a fair opportunity to challenge those opinions.
Hughes Network Systems, LLC v. California Institute of Technology, IPR2015-00059 (PTAB Dec. 30, 2015). The Board denied petitioner’s motion for additional discovery seeking to obtain information from patent owner on the public availability of an asserted paper cited by patent owner during prosecution of the patent. The Board instituted trial, finding that petitioner had made a threshold showing of public availability of the paper. The fact that the Board instituted trial is not dispositive of the issue of whether a particular reference document qualifies as a printed publication. The Board rejected petitioner’s argument that patent owner should have produced information on the public availability of the reference under the routine discovery provisions of 37 C.F.R. § 42.51(b)(1)(iii) as information inconsistent with a position advanced by patent owner. Denying the motion, the Board determined that information on the public availability of a relied-upon reference is not a substantive position for which the routine discovery provisions are intended, and that petitioner had not demonstrated that the requested discovery is in the interest of justice, because petitioner could demonstrate public availability of the reference by other means. Arguments pointing to a deficiency in petitioner’s case do not impose an obligation on the part of patent owner to provide evidence supplementing that provided by petitioner.
CaptionCall, L.L.C. v. Ultratec, Inc., IPR2015-00636, Paper 20 (PTAB Jan. 26, 2016). The Board denied authorization for patent owner to file a motion requesting additional discovery regarding the facts and materials on which petitioner’s declarant relied in forming his opinions of unpatentability. In particular, patent owner sought drafts of the claim charts that are contained in the petition, on the basis that the declarant testified that he relied upon claim charts in the petition in forming his opinions. The Board denied patent owner’s request as being untimely and because patent owner did not demonstrate that it would find something useful in investigating drafts of the claim charts. Patent owner requested discovery two months after filing its response. Therefore, patent owner lacks an opportunity to file a substantive paper addressing the drafts, which weighs against the possibility that patent owner would find something useful in the drafts.
Luv N’ Care, Ltd. v. Munchkin, Inc., IPR2015-00872, Paper 17 (PTAB Jan. 29, 2016). The Board granted petitioner’s motion to compel testimony and documents from a third party regarding information necessary to establish that alleged prior art products were on-sale prior to the critical date of the patent and therefore prior art to substitute claims that are the subject of patent owner’s motion to amend. In accordance with 37 C.F.R. § 42.52(a), the Board required petitioner, in its motion, to (1) identify, as specifically as possible, what testimony and/or documents it seeks from the third party, (2) explain why such information is relevant and needed at this stage of the proceeding, and (3) describe all efforts made by petitioner to date to obtain the information it seeks outside the use of a subpoena. The Board granted petitioner’s motion (Paper 24, Feb. 19, 2016), determining that the information sought will be useful in determining the prior art status of the depicted products.
CaptionCall, L.L.C. v. Ultratec, Inc., IPR2015-00636, Paper 42 (PTAB Feb. 23, 2016). The Board denied patent owner’s motion for additional discovery seeking information and documents concerning whether petitioner properly identified all RPIs in its petition. The Board determined that patent owner’s discovery requests were speculative and not in the interests of justice. Patent owner is investigating petitioner’s compliance with its identification of RPIs, a process expressly rejected by the Office during adoption of the AIA rules. Patent owner’s discovery requests cast a broad net with only the mere hope of finding something relevant. The nature of patent owner’s discovery requests weighs against finding its requests additional discovery is in the interests of justice.
Prong, Inc. v. Sorias, IPR2015-01317, Paper 17 (PTAB Feb. 29, 2016). The Board granted patent owner authorization to file a motion for additional discovery regarding secondary considerations of nonobviousness, including material related to the sale and marketing of petitioner’s products, as well as material related to certain efforts to license the application that gave rise to the patent-at-issue. Petitioner argued that patent owner could not show nexus between petitioner’s product and the patent-at-issue. The Board determined that briefing is warranted, and therefore authorized patent owner to file a motion for additional discovery and authorized petitioner to file an opposition to the motion.
Instradent USA, Inc. v. Nobel Biocare Services AG, IPR2015-01786, Paper 22 (PTAB Mar. 22, 2016). The Board granted petitioner authorization to file a motion for additional discovery pertaining to the preparation, printing, receipt, and distribution of catalogs relevant to the public accessibility of relied-upon reference. Patent owner argued that this discovery was already sought during the related ITC litigation, and thus should not be subject to additional discovery in the IPR proceeding. The Board determined that further briefing on this issue is warranted, and thus authorized petitioner to file a motion for additional discovery. The motion shall identify the specific discovery requests sought, explain why such discovery is narrowly tailored and not a “fishing expedition,” and further address any prior efforts to obtain that discovery in the related ITC litigation.
Argentum Pharmaceuticals LLC v. Research Corp. Techs., Inc., IPR2016-00204, Paper 12 (PTAB Apr. 6, 2016). The Board authorized petitioner to file a motion to compel routine discovery under 37 C.F.R. § 42.51(b)(1)(iii) of information allegedly inconsistent with a position advanced by patent owner in its preliminary response with respect to an asserted reference. In the preliminary response, patent owner asserted that petitioner did not demonstrate that a relied-upon thesis is a printed publication. Petitioner asserted that patent owner possesses, but has not filed and/or served, relevant information that is inconsistent with patent owner’s position regarding the public availability of the thesis. The Board determined briefing on the issue was warranted. The Board required petitioner to show that the documents at issue contain specific information that is inconsistent with an explicit position advanced by patent owner.
AMX, LLC v. Chrimar Sys., Inc., IPR2016-00569, Paper 8 (PTAB Apr. 14, 2016). The Board authorized patent owner to file a motion for additional discovery regarding real parties-in-interest. Patent owner argued that certain parties may be obligated to indemnify petitioner in connection with an ongoing district court case, and, thus, may have funded, directed, or controlled the petition. The Board authorized patent owner to file the motion, despite petitioner’s arguments that, even if such indemnification obligations exist, none of the identified parties funded, directed, or controlled the petition. The Board required patent owner to identify in its motion the discovery being requested and explain why the discovery is necessary in the interest of justice, and to specifically identify the evidence already in patent owner’s possession tending to show beyond speculation that in fact something useful will be uncovered by the requested discovery.
Arkema France v. Honeywell Int’l Inc., IPR2015-00915, Paper 35 (PTAB Apr. 1, 2016). The Board partly denied petitioner’s motion for additional discovery pertaining to patent owner’s contention that the inventors conceived of, and reduced to practice, the invention claimed in the challenged patent before the dates of the asserted references. Petitioner asserts that it requires the deposition of the first-named inventor of the patent, who is not a declarant, because she authored most of the documents upon which patent owner relies to show conception, diligence, and reduction to practice. The Board agreed with patent owner that petitioner did not show sufficiently that the deposition request meets the “in the interest of justice” standard. Petitioner has not explained adequately what information the first-named inventor can provide that petitioner cannot generate from patent owner’s declarants. The mere fact that the first-named inventor authored documents upon which patent owner is relying to show conception, diligence, and reduction to practice is not enough to establish that petitioner needs the first-named inventor’s testimony to support its contention that patent owner’s invention does not antedate the asserted prior art. The Board granted petitioner’s motion for additional discovery to produce the instructions on how to perform experiments, because the details of the experiments are useful since patent owner relies on the instructions to show reduction to practice.
Snap-On Inc. v. Milwaukee Electric Tool Corp., IPR2015-01242, Paper 22 (PTAB Apr. 1, 2016). The Board denied patent owner’s motion for additional discovery from two co-petitioners in related proceedings relevant to secondary considerations of nonobviousness. The co-petitioners are not petitioners in the instant proceeding. The Board was not persuaded that patent owner established entitlement to the relief requested, as to the two co-petitioners in related IPRs because neither entity is a party in the instant proceeding. The appropriate mechanism by which a party may secure discovery from a non-party in IPR is by requesting authorization from the Board under 37 C.F.R. § 42.52(a) to apply for a subpoena from a district court under 35 U.S.C. § 24.
AMX, LLC v. Chrimar Systems, Inc., IPR2016-00569, Paper 18 (PTAB May 19, 2016). The Board denied patent owner’s motion for additional discovery regarding whether petitioner identified all real parties-in-interest (RPI) in its petition. Patent owner argued that it has evidence which tends to show that information favorable in substantive value to patent owner on the RPI issue will be uncovered by the requested discovery. Patent owner referred to evidence indicating that petitioner may have indemnification agreements with third parties. “Patent Owner, however, does not identify any evidence suggesting that those indemnification agreements would be useful in demonstrating that the third parties direct, control, or fund these proceedings….Moreover, we are not persuaded, on this record, that the existence of indemnification agreements would indicate control over these proceedings by the indemnitor.”