Additional Discovery Ordered for Application File History

Written by Stuart Nelson.

Recently in Int'l Sec. Exch., LLC v. Chicago Bd. Options Exch., Inc., the Board ordered "additional discovery" sought under 37 CFR 42.51(b)(2)(i). IPR2014-00097, Paper 20 at 3. Motions for "additional discovery" are rarely granted (see e.g. CBM2013-00042, Paper 32; IPR2013-00411, Paper 41; IPR2013-00534, Paper 41), because additional discovery is ordered only "in the interests of justice" (37 CFR 42.51(b)(2)(i)). The Board typically applies a series of factors from the Garmin v. Cuozzo decision (IPR2012-00001, Paper 26 at 6-7) to determine whether additional discovery is in the interests of justice.

However, in Int'l Sec. Exch., the Board was "persuaded that Patent Owner's request satisfies the factors set forth in Garmin and that the additional discovery is necessary in the interest of justice." IPR2014-00097, Paper 20 at 3. The Board found that the "request is narrow, easily understandable, and not unduly burdensome, and demonstrates more than a mere possibility of uncovering something useful," that the unpublished "file history of the application appears to represent information that Patent Owner cannot obtain reasonably without a discovery request," and that the request was not litigation-focused. Id. While additional discovery remains rarely granted, this decision shows that it can be granted in situations with a strong showing that the discovery sought exists and is necessary for the proceeding.