On September 30, 2014, the PTAB published guidance about discovery in AIA proceedings in a new article written by Administrative Patent Judges Jacqueline Bonilla and Sheridan Snedden. The article explains the difference between routine discovery and additional discovery. It also walks through the considerations that the Board takes into account in deciding whether to grant motions for additional discovery. The full article can be found here, and is also reproduced below.
Message From Administrative Patent Judges Jacqueline Bonilla and Sheridan Snedden: Routine and Additional Discovery in AIA Trial Proceedings: What Is the Difference?
The Leahy-Smith America Invents Act ("AIA") created administrative trial proceedings to be conducted by the Patent Trial and Appeal Board ("PTAB" or "Board") as a cost-effective alternative to litigation. Consistent with statutory provisions and legislative intent of the AIA, strong public policy exists to limit discovery in AIA proceedings. Thus, the scope of discovery in AIA trials before the Board differs significantly from the scope of discovery generally available under the Federal Rules of Civil Procedure in district court litigation.
AIA proceedings potentially involve three categories of limited discovery: (1) mandatory initial disclosures; (2) routine discovery; and (3) additional discovery. 37 C.F.R. 42.51. To provide flexibility, the Board's rules allow parties to agree regarding (1) and (3). In fact, beyond certain routine discovery that parties must provide to each other, the Board encourages parties to agree on discovery whenever possible.
This article focuses on routine and additional discovery, the two most common of the three categories. Stay tuned for an upcoming article on mandatory initial disclosures, an option used less often so far, but one that allows parties to agree about the automatic discovery of certain information upon institution of a trial.
Routine discovery in AIA trials corresponds to evidence and information that a party must provide to the other side. Routine discovery is self-executing. BlackBerry Corp. et al. v. Wi-Lan USA Inc., IPR2013-00126, Paper 15, 2. Thus, there is no need for a party to file a motion for "routine discovery" with the Board, or serve a request for routine discovery on a party parties have the burden to come forward and provide such material. Id.; 37 C.F.R. 42.51(b)(1); Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 19, 2.
Routine discovery includes: (i) any exhibit cited in a paper or in testimony in the case; (ii) cross examination of affidavit testimony; and (iii) relevant information that is inconsistent with a position advanced by a party, which must be served concurrently with the filing of documents or things that contain the inconsistency. 37 C.F.R. 42.51(b)(1).
In relation to (i), a party must serve such exhibits at the same time it serves a paper or testimony citing them, unless the exhibits were previously submitted, both parties agree, or the Board orders otherwise. Id. The rule regarding (i) does not require, however, that a party create materials or provide materials not cited. See Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions ("Trial Rules"), 77 Fed. Reg. 48,612, 48,622 (Aug. 14, 2012). In addition, (i) relates to evidence actually cited in a paper or testimony, not the materials that a party or witness relies upon when preparing the paper or testimony. BlackBerry, IPR2013-00126, Paper 15, 2; see also Corning Inc. v. DSM IP Assets B.V., IPR2013-00043, Paper 27, 3 (stating routine discovery requirements do not require that "all the underlying data and lab notebooks be produced" with a paper that references an experiment).
In relation to (ii), cross-examination of a declarant or affiant is permitted as routine discovery. 37 C.F.R. 42.51(b)(1)(ii). As noted in the Office Patent Trial Practice Guide, a party relying on a witness's testimony by declaration or affidavit should arrange to make that witness available for cross-examination. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012). Normally, the burden and expense of producing a witness for cross-examination falls on the party presenting the witness. Id.
In relation to (iii), the requirement for information inconsistent with a position advanced does not include discovery of material protected by attorney-client privilege or attorney work product immunity. 37 C.F.R. 42.51(b)(1)(iii). Moreover, routine discovery under (iii) "is narrowly directed to specific information known to the responding party to be inconsistent with a position advanced . . . , and not broadly directed to any subject area in general within which the requesting party hopes to discover such inconsistent information." Garmin Int’l Inc. et al. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26, 3-4.
Additional Discovery and Five Garmin Factors
Beyond routine discovery, parties may agree to provide additional discovery. Otherwise, a party must request additional discovery. 37 C.F.R. 42.51(b)(2)(i). The AIA legislative history makes clear that requested additional discovery should be confined to "particular limited situations, such as minor discovery that PTO finds to be routinely useful, or to discovery that is justified by the special circumstances of the case." 154 Cong. Rec. S9988-89 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl). In light of this history and statutory deadlines, the Board must be conservative in authorizing additional discovery. See id. at S9989.
The Board applies an "interests of justice" standard when deciding whether to grant additional discovery in inter partes reviews (IPRs), and a "good cause" standard in post-grant reviews (PGRs), including covered business method patent reviews (CBMs). 35 U.S.C. 316(a)(5); 326(a)(5); 37 C.F.R. 42.51(b)(2); 42.224(a). On balance, the interests of justice standard is slightly higher than the good cause standard. This difference reflects the more limited scope of issues raised in IPR petitions, i.e., grounds that could be raised under 102 or 103 based on patents or printed publications, as compared with PGR petitions. 35 U.S.C. 311(b). Notwithstanding the two standards, however, the same principles caution against overly broad discovery.
As outlined in the Garmin case, the Board typically weighs five factors when considering whether additional discovery in an IPR is "necessary in the interest of justice."
- More Than A Possibility And Mere Allegation. The mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient. Thus, the party requesting discovery already should be in possession of a threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be uncovered. "Useful" does not mean merely "relevant" or "admissible," but rather means favorable in substantive value to a contention of the party moving for discovery.
- Litigation Positions And Underlying Basis. Asking for the other party's litigation positions and the underlying basis for those positions is not necessarily in the interest of justice.
- Ability To Generate Equivalent Information By Other Means. Information a party can reasonably figure out, generate, obtain, or assemble without a discovery request would not be in the interest of justice.
- Easily Understandable Instructions. The requests themselves should be easily understandable. For example, ten pages of complex instructions is prima facie unclear.
- Requests Not Overly Burdensome To Answer. The Board considers financial burden, burden on human resources, and burden on meeting the time schedule of the review. Requests should be sensible and responsibly tailored according to a genuine need.
Garmin, IPR2012-00001, Paper 26, 6-7; see also id. at Paper 20.
Other Board cases have addressed those five factors when considering whether to grant additional discovery in IPRs in relation to issues such as secondary considerations in an obviousness analysis, prior art disclosures, expert testimony, and real party-in-interest or privity. Board decisions providing guidance on these issues include the following:
- Corning Inc. v. DSM IP Assets B.V., IPR2013-00043, Paper 27
- granting a request for laboratory notebooks, stating that details of procedures were per se useful when a petitioner cited expert testimony that relied upon those details to demonstrate unpatentability (first Garmin factor weighed in favor of discovery, and other factors did not disfavor discovery)
- denying a request for samples because party did not show that request was not overly burdensome (fifth Garmin factor) or could not get information through documents otherwise produced (third Garmin factor)
- Apple Inc. v. Achates Reference Publ’g, Inc., IPR2013-00080, Paper 66 (granting additional discovery regarding e-mail communications between expert witnesses relied upon by those witnesses as a basis for their opinions)
- RPX Corp. v. Virnetx Inc., IPR2014-00171, Paper 25 (granting additional discovery regarding real party-in-interest and privity issues)
- Arris Group, Inc. v. C-Cation Techs., LLC, IPR2014-00746, Paper 15 (granting additional discovery regarding an indemnification agreement as it relates to privity)
- Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 32 (denying additional discovery relevant to commercial success)
- stating that while "a conclusive showing of nexus is not necessary at this stage, some showing of relevance is necessary," especially where the claimed feature "is itself not a product but one feature of a complex  product") (first Garmin factor)
- stating that certain requested information seemed "publicly available on the Internet or elsewhere" (third Garmin factor)
- noting that certain requests were not time-limited, and were imprecise, unfocused, and unduly burdensome (fifth Garmin factor)
- Palo Alto Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369, Paper 36 (denying additional discovery relating to copying, discussing nexus in relation to first Garmin factor, and that request appeared "not focused, overly broad, and unduly burdensome" under fifth Garmin factor)
- Schott Gemtron Corp. v. SSW Holding Co., Inc., IPR2013-00358, Paper 43 (denying motion for additional discovery regarding commercial success)
- request did not provide a threshold amount of evidence of (1) sales allegedly amounting to commercial success, or (2) alleged nexus between the claimed invention and commercial success (first Garmin factor)
- denying requests as overly burdensome (fifth Garmin factor) because some were "not limited to" specific requested information, some requested documents "sufficient to show" something, without explaining "sufficient," and some requested documents related to "forecasted" sales, not just actual sales, without explaining relevance to commercial success
- delay of request weighed against granting motion
Notwithstanding the slightly lower standard in PGRs and CBMs, the Board considers the same five Garmin factors used for IPRs when addressing whether additional discovery is necessary for "good cause," and "limited to evidence directly related to factual assertions" advanced by a party. 37 C.F.R. 42.224; Bloomberg Inc. et al. v. Markets-Alert Pty Ltd, CBM2013-00005, Paper 32.
For example, as in an IPR, in showing the first Garmin factor, a moving party must provide a specific factual reason for expecting reasonably that the discovery will be "useful," where "useful" means favorable in substantive value to a contention. Bloomberg, CBM2013-00005, Paper 32, 5; see also Schott Gemtron, IPR2013-00358, Paper 43, 4.
Board decisions providing guidance on the application of the five Garmin factors in a CBM include:
- Bloomberg Inc. et al. v. Markets-Alert Pty Ltd, CBM2013-00005, Paper 32
- granting a request for documents and things "specific and tailored narrowly, seeking information from one individual that is related to a single declaration on the issues raised . . . in [the] Petition"
- denying other requests because arguments were speculative and did not provide sufficient factual reason to demonstrate that something "useful" would be uncovered (first Garmin factor), requestor could generate information by other means (third Garmin factor), requests were unduly broad and burdensome (fifth Garmin factor)
- SAP America, Inc. v. Versata Dev. Group, Inc., CBM2012-00001, Paper 24 (granting a request for five specific documents that were not burdensome to produce (fifth Garmin factor), where producing party did not identify prejudice other than alleged lack of relevance)
Benefits of limited discovery include lowering costs, minimizing complexity, and shortening periods required for dispute resolution. The PTAB also must address these considerations in light of the one-year statutory deadline (absent limited exceptions) for completing AIA trials. Notwithstanding necessary limits, however, the parties may achieve additional flexibility by agreeing to discovery, bypassing the need for the Board to intervene and address such considerations.