At the federal district court the requesting party can simply
lay out a reasoned basis for trying to seek certain categories of
information. At the Board, though, an attorney needs to begin with
a threshold piece of evidence as a starting point.
What happens in federal district court is that a legal team goes
exploring, looking for anything that might show up that would be
relevant to the case. The PTAB is different in that it doesn't
see itself as a district court and what it allows is discovery in
order to reach a reasoned conclusion about the validity of the
patent.
The Board is very sensitive to keeping the post-grant proceedings a
more efficient, less expensive alternative to litigation and for
that reason, the kind of discovery they permit is very different
from what litigants are used to in district court.
There is a misconception about discovery at the PTAB; the board has
a different standard and a different perspective that they're
going to apply in assessing whether discovery is appropriate in a
particular case.
A legal team can get discovery to challenge a declarant, can get
discovery to cross-examine a declarant and can get some evidence to
confirm a position on which client or attorney already has
evidence. It's a very different perspective and starting point
than in federal district court.
One of the more important factors has to do with showing more than
a mere possibility or a mere allegation that certain facts exist. A
client must have threshold evidence showing that something useful
is going to come out of the process.
In sum, a client needs to have thought through its discovery needs
with their attorneys. Knowing what has been done, what can be done,
what needs to be done is important in all cases.
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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.
