United States: Making the Most of Limited Discovery Before the PTAB

Originally appeared in Kaye Scholer's Spring 2016 PTAB Monitor: Developments in Inter Partes Review Practice.

The legislative history of the America Invents Act (AIA) conveys Congress's clear intent that discovery in proceedings held before the Patent Trial and Appeal Board (PTAB) of the Patent and Trademark Office "should be limited."[1] Consistent with this Congressional intent, the administrative patent judges of the PTAB have narrowly construed the applicable laws and regulations, denying most requests for discovery. By tightly constraining discovery, the PTAB not only adheres to the mandate of the AIA to complete any review within one year, but also aims to achieve a key part of the legislative goal "to provide a quick and cost effective alternative to federal district court patent litigation."[2] Nevertheless, the stakes in the trial proceedings under the AIA—inter partes reviews (IPR) and post-grant reviews (PGR) (including the distinct but similar covered business method (CBM) proceedings)—can be just as high as in district court. Therefore, understanding how to use the limited discovery process to your advantage is crucial, and the following practical tips gleaned from successes and failures to date will help you best position your request for, or opposition to, discovery before the PTAB.

Know the Standards

The AIA permits a bare minimum of "routine discovery" in any proceeding, including the right to cross-examine an adversary's declarant and the requirement to produce "relevant information that is inconsistent with a position advanced by the party."[3] However, in the case of an IPR, any "additional discovery" beyond the "routine" is sharply constrained by statute to "what is otherwise necessary in the interest of justice."[4] The standard for a PGR or CBM proceeding is a slightly more permissive "good cause" for "additional discovery."[5] Regardless of the type of proceeding, however, the PTAB has interpreted the right to additional discovery to be very limited.

When evaluating discovery requests, the PTAB considers five "factors," identified in Garmin International, Inc. v. Cuozzo Speed Technologies, LLC, to be "important."[6] PTAB decisions take these five points, and the failure to satisfy them, very seriously. Practitioners should be prepared to argue each of these factors during the conference call regarding whether the PTAB will allow the motion for additional discovery to be filed, as well as in any subsequent briefing. The Garmin factors are:

"More Than a Possibility and Mere Allegation." The broad, permissive scope of discovery available in district court proceedings is inapplicable before the PTAB. As the PTAB has held, to be entitled to discovery, "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."[7] Instead, the movant must be in possession of "evidence tending to show beyond speculation" that discovery will yield something substantively valuable or "useful" in its favor.[8] This is a high bar. Allegations that discovery will lead merely to "relevant" or "admissible" evidence are insufficient. Even strong circumstantial evidence that discovery will be fruitful may be disregarded by the PTAB as mere speculation, and discovery denied.[9] If the party requesting discovery cannot say with certainty that the requested documents actually exist, it is unlikely the request will be granted.

"Litigation Positions and Underlying Basis." The PTAB will not accept attempts to alter the set timeline for presentation of evidence, and therefore "[a]sking for the other party's litigation positions and the underlying basis for those positions is not necessary in the interest of justice."[10] These broad, burden-shifting discovery requests common in district court will not be allowed.

"Ability to Generate Equivalent Information by Other Means." If a party can locate the desired information in publicly available materials—whether via the Patent Office website, conducting its own survey, or even a Google search—it is not an appropriate target for a discovery request. The PTAB has explained that "[i]nformation 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."[11] The PTAB has even rejected the seemingly innocuous request for the production of the file histories of the prior art references relied on in a petition.[12]

"Easily Understandable Instructions." Drop the legalese. Discovery requests containing pages of complex instructions are unlikely to pass muster. And, more than merely containing straightforward instructions, the requests themselves must be very specific and straightforward. "The questions should be easily understandable" and open-ended requests may be rejected.[13] For example, the PTAB has rejected requests for documents "sufficient to show"—a staple wording of district court discovery—as unclear.[14] It has also rejected a proposed list of "example" deposition topics because the reference to an "example" left it unclear "what topic, if any, is not available for discussion."[15] To maximize the likelihood of success, discovery requests should be drafted in clear, precise and straightforward language.

"Requests Not Overly Burdensome to Answer." While reams of discovery requests are common in district court litigation, discovery requests in a motion before the PTAB should be pared down to a bare minimum. "The requests must not be overly burdensome to answer, given the expedited nature of" the proceedings.[16] Because the proceedings must be completed within one year, the PTAB remains cognizant of time and scheduling burdens in deciding motions for additional discovery. Indeed, a successful strategy to oppose a request for additional discovery may include laying out the cost, staffing and time necessary to comply with the request.[17] In addition, where discovery will result in a burden on the proceedings overall, such as a "trial within a trial" on the issue of infringement, which may be needed to establish the relevance of the commercial success of a petitioner's product, that discovery will likely be denied.[18]

Avoid Common Pitfalls

The PTAB regularly rejects certain discovery requests.

Secondary Considerations. It is well established that there must be a "nexus" between a claimed invention and the evidence of secondary considerations of nonobviousness. Nevertheless, the PTAB has repeatedly rejected requests for discovery on secondary considerations of nonobviousness for failure of a patent owner to establish this nexus.[19] Unlike district court litigation, and consistent with the first Garmin factor, the PTAB will not grant discovery on secondary considerations absent evidence of a nexus. In general, do not request discovery whose relevance is predicated on another factual showing unless you already have strong evidence of the predicate facts.

Real Party-In-Interest. As the PTAB explained in deciding a request for discovery aimed at identifying the real party-in-interest, "we consider whether the Patent Owner is already in possession of evidence tending to show beyond speculation that something useful will be discovered," consistent with the first Garmin factor.[20] Thus, a movant must have some knowledge of the particular facts at play before the PTAB will grant requests for additional discovery to support these facts.[21] In one case, for example, the existence of an indemnity agreement between the petitioner and third party that allowed the third party "full control and authority over the defense" of any proceeding brought against petitioner was a sufficient basis for allowing additional discovery on the issue.[22] However, even where circumstantial evidence seemed strong—a suspected party-in-interest coordinated with the petitioner in a related district court litigation, is owned by the same entity as the petitioner, and shares counsel—the PTAB still denied discovery because the moving party failed to establish beyond "mere allegation and speculation" that something useful would be uncovered by the grant of additional discovery.[23] The Federal Circuit has denied mandamus in such circumstances as well.[24]

Once the movant has made the requisite showing that something useful is likely to be discovered, discovery requests must still be narrowly tailored to pass muster. In response to a petition filed by the Coalition for Affordable Drugs, the patent owner proposed nine discovery requests directed to the real party-in-interest. Although the PTAB found the patent owner had shown the "threshold amount of evidence" required, it nevertheless decided that the requests were "unduly broad."[25] Ultimately, the PTAB allowed discovery of only one narrowed request directed to any agreements in the possession of the Coalition relating to the "ability to control any aspect of the current proceeding."[26]

Make Your Motion Promptly

Do not delay in making your discovery requests. As a patent owner, the time for seeking discovery is generally during the three months between the PTAB's decision to institute and the patent owner's response.[27] However, there is reason to file requests for discovery directed to a real party-in-interest even earlier in a proceeding. In one case, the PTAB found that a patent owner's "delay in requesting additional discovery weigh[ed] against granting the motion," where the patent owner "waited until nearly three months after Apple's petitions were filed and one week prior to the due date for its preliminary responses" to seek discovery."[28] Given the compressed timeline of these proceedings, it is important to move promptly. Moreover, if you do not receive the discovery to which you are entitled—whether "routine" or "additional" discovery—you must affirmatively raise the issue with the PTAB in order to rectify the failure.[29]

Negotiate First

Parties to a proceeding are allowed to "agree to additional discovery between themselves."[30] Where possible, reaching agreement on additional discovery—even if it means providing some discovery to the opposing party in exchange—is the easiest way to obtain discovery without the worry of meeting the PTAB's high bar. Indeed, the PTAB may instruct parties to make a "good faith effort to agree to discovery amongst themselves" before authorizing a motion.[31]

Adjust Your Expectations

While the PTAB says that it "will be conservative in granting additional discovery,"[32] most practitioners recognize this is an extreme understatement. According to DocketNavigator's analytics, less than half (approximately 46.6 percent) of motions for additional discovery are granted in whole or in part, but this statistic does not take into account the numerous requests for leave to file a motion for additional discovery that are denied during conference calls with the PTAB.

Final Thoughts

Remember that IPR, PGR and CBM proceedings are before the Patent Office; discovery standards and practices useful in district court are largely irrelevant before the Board. Rather than the district court practice of sweeping discovery requests, the greatest chance of success in discovery before the PTAB comes from focusing on narrow issues that can be resolved expeditiously based on targeted requests. Ultimately, the PTAB grants discovery requests only after very exacting standards are met, and only by adhering closely to the Garmin factors can you prevail on a motion for additional discovery.


» Click here to read more articles from our latest PTAB Monitor: Developments in Inter Partes Review Practice.


[1]       Innolux Corp v. Semiconductor Energy Laboratory Co., IPR2013-00038, Paper 25 at 2 (PTAB May 21, 2013).

[2]       Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 32 at 3 (PTAB March 8, 2013) (representative opinion).

[3]       37 C.F.R. § 42.51(b)(1).

[4]       35 U.S.C. § 316(a)(5)(B).

[5]       37 C.F.R. § 42.224; Bloomberg Inc. v. Markets-Alert PTY Ltd., CBM2013-00005, Paper 32 at 2-3 (PTAB May 29, 2013) (representative opinion).

[6]       Garmin Int'l, Inc. v. Cuozzo Speed Technologies, LLC, IPR2012-00001, Paper 20 at 2-3 (PTAB Feb. 14, 2013).

[7]       Id. at 2.

[8]       Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 6 (PTAB March 5, 2013) (informative opinion).

[9]       See, e.g., GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00041, Paper 23 at 3 (PTAB April 22, 2014); see also Innolux, IPR2013-00038, Paper 25 at 4.

[10]     Garmin, IPR2012-00001, Paper 20 at 2.

[11]     Id. at 3.

[12]     Garmin, IPR2012-00001, Paper 26 at 3, 14.

[13]     Garmin, IPR2012-00001, Paper 20 at 3.

[14]     Apple Inc. v. Sightsound Techs., LLC, CBM2013-00020, Paper 40 at 7 (PTAB Dec. 11, 2013).

[15]     Cardiocom, LLC v. Robert Bosch Healthcare Sys., Inc., IPR2013-00431, Paper 43 at 3 (PTAB May 12, 2014).

[16]     Garmin, IPR2012-00001, Paper 20 at 3.

[17]     See, e.g., Garmin, IPR2012-00001, Paper 26 at 15.

[18]     See, e.g., Apple, CBM2013-00020 , Paper 40 at 6 ("The discovery would result in a trial within a trial on the issue of infringement, with associated evidence, arguments, and (potentially) declarants from SightSound, and then the same from Apple in response.").

[19]     See, e.g., id. at 9; Zodiac Pool Sys., Inc. v. Aqua Prods., Inc., IPR2013-00159, Paper 26 at 4-5 (PTAB Oct. 18, 2013); Google Inc. v. Jongerius Panoramic Techs., LLC, IPR IPR2013-00191, Paper 27 at 4-6 (PTAB Sept. 30, 2013).

[20]     Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, IPR2014-00717, Paper 17 at 2 (PTAB Oct. 2, 2014).

[21]     See, e.g., Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., IPR2014-00488, Paper 25 at 5-6 (PTAB Nov. 5, 2014); Zerto, Inc. v. EMC Corp., IPR2014-01254, Paper 15 at 6 (PTAB Nov. 25, 2014).

[22]     See Samsung, IPR2014-00717, Paper 17 at 3; see also Arris Grp., Inc. v. C–Cation Techs., LLC, IPR2015-00635, Paper 10 at 6 (PTAB May 1, 2015) (informative opinion).

[23]     GEA Process Eng'g, IPR2014-00041, Paper 23 at 6.

[24]     In re Telefonaktiebolaget LM Ericsson, 564 F. App'x 585, 586 (Fed. Cir. 2014) (unpublished).

[25]     Coalition for Affordable Drugs II LLC v. NPS Pharms., Inc., IPR2015-00990, Paper 14 at 6 (PTAB July 2, 2015).

[26]     Id. at 7.

[27]     See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 at 48757.

[28]     Apple Inc. v. Achates Reference Publishing, Inc., IPR2013-00080 , Paper 18 at 7 (PTAB April 3, 2013); see also RPX Corp. v. Macrosolve, Inc., IPR2014-00140, Paper 9 at 4 (PTAB May 16, 2014) ("The time for Patent Owner to have sought discovery on this issue was during the three months between Patent Owner's receipt of the Petition . . . and Patent Owner's filing of its Preliminary Response.").

[29]     37 C.F.R. § 42.51(a)(2); id. § 42.52(a)(2).

[30]     37 C.F.R. § 32.15(b)(2).

[31]     See, e.g., Accord Healthcare Inc., USA v. Daiichi Sankyo Co., IPR2015-00865, Paper 28 at 10 n.11 (PTAB Sept. 15, 2015).

[32]     Garmin, IPR2012-00001, Paper 20 at 2.

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.

Authors
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
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
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.

Disclaimer

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.

General

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