United States: IPR Spotlight Series: Navigating IPR Discovery

Inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) became available on September 16, 2012 as a post-grant review procedure to challenge the patentability of issued claims based on prior art patents and publications. To help navigate the uncharted waters of this procedure, each edition of IP Buzz - Post Grant Practice will include an installment of our new IPR Spotlight Series, where we will feature a specific event on the  IPR timeline, from filing the petition for IPR through oral hearing and final written decision. We will present an overview of the featured filing or procedure, along with practice tips and strategy informed by recent PTAB decisions, statistics, and practical experience. In our fifth IPR Spotlight installment, we focus on navigating IPR discovery.

Part 5: Navigating IPR Discovery

The America Invents Act ("AIA") offers very limited discovery in IPR proceedings, including "the deposition of witnesses submitting affidavits or declarations" and "what is otherwise necessary in the interest of justice."1 The PTAB has interpreted these provisions to cover three categories of discovery: (1) mandatory initial disclosures;2 (2) routine discovery;3 and (3) additional discovery.4 In addition, a party may move to compel discovery from third parties.5

On September 30, 2014, the PTAB issued guidelines on routine and additional discovery, in an article by Administrative Patent Judges Jacqueline Bonilla and Sheridan Snedden. The article explains the difference between routine and additional discovery, and delineates the PTAB's considerations when deciding whether to grant motions for additional discovery. 

This article sets out the three categories of discovery, plus third party discovery in IPR, along with the PTAB's recent guidance on routine and additional discovery.  A brief overview of the types of possible discovery is shown in Figure 1 below.

Figure 1:  The Types of Limited Discovery Available in IPR Proceedings

1. Mandatory Initial Disclosures

The term "mandatory initial disclosure" is somewhat misleading because this type of disclosure is not mandatory at all; in fact, the parties must agree on mandatory discovery and file a notice with the PTAB indicating which form of initial discovery the parties have agreed upon.6 This notice must be filed before the deadline for the patent owner to file its preliminary response in order for initial disclosures to be used at all. 7Once trial is instituted, the parties may then automatically take discovery of information identified in the initial disclosures.8 As a result, initial disclosures are the least used of the three categories of discovery.

Initial disclosures come in two forms:

1) Both parties disclose identities of individuals likely to have discoverable information and provide documents they may use to support defenses; and

2) If the IPR petition raises obviousness, the petitioner must make disclosures regarding objective evidence.9

If the parties fail to reach an agreement, the parties "may seek the mandatory discovery ... by motion."10 Mandatory initial disclosures are similar in scope to initial Rule 26 disclosure in a civil litigation.11 The PTAB has an upcoming article that will provide additional guidance on mandatory initial disclosures.

2. Routine Discovery

Routine discovery is automatic and does not require a motion or requests for discovery.12 Instead, the producing party has the obligation to provide the material on its own.13 Routine discovery includes:

1) Any exhibit cited in a paper or in testimony in the case: A party must serve these exhibits at the same time it serves the paper or testimony citing to them. This category is limited to the evidence actually cited, not materials that the party or witness relies upon when preparing the paper or testimony.14

2) Cross examination of affidavit testimony: A party relying on a witness's testimony by declaration or affidavit must make that witness available for cross-examination. The burden and expense of producing a witness for cross-examination falls on the party presenting the witness. The rules allow very long deposition time limits: seven hours for cross-examination, four hours for redirect examination, and two hours for re-cross examination.15

3) Information that is relevant and inconsistent with a party's case, which must be served concurrently with the filing of documents or things that contain the inconsistency.16 A party typically seeks inconsistent information via document request, although interrogatories and requests for admission may also be used.17 This category excludes privileged materials, and is "not broadly directed to any subject area in general within which the requesting party hopes to discovery such inconsistent information."18

3. Additional Discovery

Parties may also agree to additional discovery, beyond routine discovery.19 If the parties cannot reach agreement, then a party must request additional discovery.20 However, the PTAB grants very limited discovery when it is granted at all. A preliminary showing of relevance is necessary.21 In order to determine whether additional discovery in an IPR proceeding is "necessary in the interest of justice," the PTAB uses a five-factor test set forth in the first IPR, Garmin International Inc. et al. v. Cuozzo Speed Technologies LLC:22

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 necessarily in the interest of justice.

3) Ability to Generate Equivalent Information by Other Means. Information a party can reasonably figure out, generate, obtain, or assemble without a discovery request would not be in the interest of justice.

4) Easily Understandable Instructions. The requests themselves should be easily understandable. For example, ten pages of complex instructions is prima facie unclear.

5) Requests Not Overly Burdensome To Answer. The Board considers financial burden, burden on human resources, and burden on meeting the time schedule of the review. Requests should be sensible and responsibly tailored according to a genuine need.

Under this standard, the PTAB has granted only 29% of motions for additional discovery.  The PTAB's current policy on additional discovery has been a primary focus of the USPTO's "Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Apply Board."  Recently, the Intellectual Property Owners Association ("IPO") sent comments to the USPTO in response.  According to IPO, denials of motions for discovery have largely focused on Factors 1, 3, and 5, which are accordingly IPO's targets for change:

  • Factor 1: Under Factor 1, unless a co-pending litigation is fairly far along, the requesting party will have difficulty demonstrating beyond mere possibility that responsive information exists. For example, under Schott Gemtron Corp. v. SSW Holding Co., Inc.,23 the PTAB denied the motion for additional discovery regarding commercial success, finding that the request did not provide a threshold amount of evidence of sales allegedly amounting to commercial success, or alleged nexus between the claimed invention and commercial success.

    IPO has noted the unfairness in requiring a patent owner to prove the existence of commercial success and provide a likelihood of nexus before being able to discovery the evidence necessary to make out such a case. This critique applies to other objective indicia of nonobviousness as well, such as unexpected results, copying, and licensing. Accordingly, IPO believes that PTAB should relax the first factor to "a reasonable basis that the non-moving party has evidence relevant to objective indicia of non-obviousness" instead of the current "more than a mere possibility" standard.

  • Factor 3: Under Factor 3, the PTAB denies discovery where a patent owner fails to demonstrate why the requested information could not be figured out or assembled from internal or publicly available sources. For example, in Corning Inc. v. DSK IP Assets B.V.,24 the PTAB denied a request for samples because the requesting party failed to show that it could not get information through documents otherwise produced.

  • Factor 5: Under Factor 5, the patent owner must show that the requests are very narrowly tailored and will not impose a significant burden on the producing party. For example, in Microsoft Corp. v. Proxyconn, Inc.,25 the PTAB denied additional discovery relevant to commercial success, noting that among other things, certain requests were not time-limited, and were imprecise, unfocused, and unduly burdensome.

    Accordingly to IPO, the PTAB could use the fifth factor to ensure any requests are limited – by documents already in existence, shortened time windows, limited number of products, etc. This would strike a balance between the moving party obtaining necessary documents to determine whether objective indicia of non-obviousness are present while still protecting the non-moving party from overly burdensome requests.

Under the current standard, parties seeking additional discovery should draft narrow and clearly stated requests. In addition, the party must demonstrate that the information sought exists, and materially affects the party's position in the IPR proceeding. For example, in Corning Inc. v. DSM IP assets B.V., the PTAB granted a request for laboratory notebooks, where the details of procedures were per se useful when a petitioner cited expert testimony that relied upon those details to demonstrate unpatentability.

4. Compelled Discovery

Under 37 C.F.R. § 42.52, a party may also file a motion to obtain "compelled discovery," akin to a subpoena, consisting of documents and testimony from third parties. The requesting party must first make a motion for authorization to the PTAB and identify the witness and any request documents. If a motion to compel is granted, the testimony may be (1) ex parte subject to cross-examination or (2) inter partes.26

Keeping Discovery Limited

The PTAB has emphasized that AIA trials were created as "a cost-effective alternative to litigation," and therefore public policy dictates limiting discovery in these proceedings.  The PTAB article noted the benefits of "lowering costs, minimizing complexity, and shortening periods required for dispute resolution," along with meeting the one-year statutory deadline for completing AIA Trials.  Unlike district court patent litigation, parties in IPR proceedings must use requests for additional discovery sparingly, and narrowly tailor any requests that are made.  For defendants accused of patent infringement in district court litigation, participating only in limited discovery that focuses primarily on prior art documents and declarants in support of a patent position is a great advantage over the broad and expensive discovery in district court litigation, which almost always proves more burdensome on the defendant than the patent owner plaintiff.  Venable will continue to monitor potential change in response to the USPTO's request for comments, as well as additional guidance from the PTAB.


1 35 U.S.C. § 316(a)(5).
2 37 C.F.R. § 42.51(a).
3 37 C.F.R. § 42.51(b)(1).
4 37 C.F.R. § 42.51(b)(2).
5 37 C.F.R. § 42.52.
6 37 C.F.R. § 42.51(a)(1).
7 37 C.F.R. § 42.51(a)(1)(i).
8 37 C.F.R. § 42.51(a)(1)(ii).
9 PTO Trial Practice Guide at 27-28, 77 Fed. Reg. 48761-62.
10 37 C.F.R. § 42.51(a)(2).
11 PTO Trial Practice Guide at 27-28, 77 Fed. Reg. 48761-62.
12 See BlackBerry Corp. et al. v. Wi-Lan USA Inc., IPR2013-00126, Paper 15 at 2 (Aug. 19, 2013).
13 37 C.F.R. § 42.51(b)(1).
14 See Blackberry Corp. et al. v. Wi-Lan USA Inc., IPR2013-00126, Paper 15 at 2 (Aug. 19, 2013).
15 37 C.F.R. § 42.53(c)(2).
16 37 C.F.R. § 42.51(b)(1)(iii).
17 Id.
18 See Garmin Int'l Inc. et al. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 4 (March 5, 2013).
19 37 C.F.R. § 42.51(b)(2)(i).
20 Id.
21 See, e.g., Square Inc. v. REM Holdings 3 LLC, IPR2014-00312, Paper 23 at 4-5 (Sept. 15, 2014).
22 IPR2012-00001, Paper 20 at 2-3 (Feb. 14, 2013).
23 IPR2013-00358, Paper 43 (Feb. 14, 2014).
24 IPR2013-00043, Paper 27 (June 21, 2013).
25 IPR2012-00026, Paper 32 (March 8, 2013).
26 PTO Trial Practice Guide, 77 Fed. Reg. 48671.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions