Petitioners moved for an order requiring Patent Owner to produce discovery comprising Final Infringement Contentions from related district court litigations between the parties. Petitioners set forth two independent bases for requested discovery: (1) the Final Infringement Contentions should be produced as "additional" discovery under 37 C.F.R. § 42.51(b)(2)(i); or (2) the Final Infringement Contentions were required "routine" discovery under 37 C.F.R. § 42.51(b)(1)(iii). The Patent Trial and Appeal Board ("PTAB") granted Petitioners' motion as additional discovery, but declined to reach a decision on Petitioners' alternative basis under routine discovery.

A party seeking additional discovery during inter partes review ("IPR") proceedings must demonstrate that it is "necessary in the interests of justice." In assessing whether a party has met this standard, the PTAB looks to five factors articulated in Garmin Int'l Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013). Here, the PTAB found that all five Garmin factors supported granting Petitioners' motion.

First, Petitioners established there was more than a possibility that the requested discovery would yield useful information because the Final Infringement Contentions provide an indication of Patent Owner's understanding of the '835 Patent and it was undisputed that Patent Owner took different positions regarding claim language. While the PTAB did not rule on whether those positions were in fact inconsistent, the "acknowledged differences" were sufficient to support a finding that the requested discovery is in the interests of justice. Furthermore, because Petitioners' counsel already had the requested discovery in their possession from the related litigations, this was not a fishing expedition for something that might not exist. Second, Petitioners were not trying to ascertain the underlying basis for Patent Owner's litigation positions. Third, the Final Infringement Contentions would be unavailable unless Petitioners' motion was granted and the Board might need access to those complete contentions should Petitioners' substantive briefing assert arguments related to alleged inconsistencies. Fourth, Patent Owner readily understood what Petitioners were requesting for additional discovery in the IPR proceeding. Fifth, it would not be burdensome for Patent Owner to produce the Final Infringement Contentions in this IPR proceeding.

Practice Point: Discovery is limited in IPR proceedings, and the PTAB will only authorize additional discovery when necessary in the interests of justice. A party is more likely to meet this standard where the request is limited in scope, the moving party is already in possession of the requested materials from related proceedings, and access to the requested materials by the PTAB may be necessary for a complete record (e.g., to determine whether a party has taken inconsistent positions regarding claim scope).

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.