Published in Law360. Originally appeared in Kaye Scholer's Spring 2016 PTAB Monitor: Developments in Inter Partes Review Practice.
—by Deborah Fishman and Paul Margulies
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.” 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.” 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.” 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.” The standard for a PGR or CBM proceeding is a slightly more permissive “good cause” for “additional discovery.” 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.” 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.” 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. 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. 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.” 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.” 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.
“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. For example, the PTAB has rejected requests for documents “sufficient to show”—a staple wording of district court discovery—as unclear. 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.” 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. 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. 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.
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. 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. 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. 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. 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. The Federal Circuit has denied mandamus in such circumstances as well.
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.” 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.”
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. 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.” 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.
Parties to a proceeding are allowed to “agree to additional discovery between themselves.” 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.
Adjust Your Expectations
While the PTAB says that it “will be conservative in granting additional discovery,” 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.
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.
 Innolux Corp v. Semiconductor Energy Laboratory Co., IPR2013-00038, Paper 25 at 2 (PTAB May 21, 2013).
 Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 32 at 3 (PTAB March 8, 2013) (representative opinion).
 37 C.F.R. § 42.51(b)(1).
 35 U.S.C. § 316(a)(5)(B).
 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).
 Garmin Int’l, Inc. v. Cuozzo Speed Technologies, LLC, IPR2012-00001, Paper 20 at 2-3 (PTAB Feb. 14, 2013).
 Id. at 2.
 Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 6 (PTAB March 5, 2013) (informative opinion).
 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.
 Garmin, IPR2012-00001, Paper 20 at 2.
 Id. at 3.
 Garmin, IPR2012-00001, Paper 26 at 3, 14.
 Garmin, IPR2012-00001, Paper 20 at 3.
 Apple Inc. v. Sightsound Techs., LLC, CBM2013-00020, Paper 40 at 7 (PTAB Dec. 11, 2013).
 Cardiocom, LLC v. Robert Bosch Healthcare Sys., Inc., IPR2013-00431, Paper 43 at 3 (PTAB May 12, 2014).
 Garmin, IPR2012-00001, Paper 20 at 3.
 See, e.g., Garmin, IPR2012-00001, Paper 26 at 15.
 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.”).
 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).
 Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, IPR2014-00717, Paper 17 at 2 (PTAB Oct. 2, 2014).
 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).
 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).
 GEA Process Eng’g, IPR2014-00041, Paper 23 at 6.
 In re Telefonaktiebolaget LM Ericsson, 564 F. App’x 585, 586 (Fed. Cir. 2014) (unpublished).
 Coalition for Affordable Drugs II LLC v. NPS Pharms., Inc., IPR2015-00990, Paper 14 at 6 (PTAB July 2, 2015).
 Id. at 7.
 See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 at 48757.
 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.”).
 37 C.F.R. § 42.51(a)(2); id. § 42.52(a)(2).
 37 C.F.R. § 32.15(b)(2).
 See, e.g., Accord Healthcare Inc., USA v. Daiichi Sankyo Co., IPR2015-00865, Paper 28 at 10 n.11 (PTAB Sept. 15, 2015).
 Garmin, IPR2012-00001, Paper 20 at 2.
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