Use of Discovery in Inter Partes Proceeding

The scope of discovery permitted during an inter partes review is different then discovery in an infringement action.
Under the Leahy-Smith America Invents Act, additional patent discovery is available for “what is otherwise necessary in the interest of justice.” As the Patent Trial and Appeal Board (Board) notes, this standard is “significantly different from the scope of discovery generally available under the Federal Rules of Civil Procedure.”
In Garmin Int’l Inc. v. Cuozzo Speed Technologies, LLC, Case No. IPR2012-00001 (PTAB March 5, 2013), Cuozzo Speed Technologies, LLC attempted to label all of its document requests and interrogatories as “routine discovery,” for which the Board’s authorization is not required. However, the Board strongly disagreed with this characterization, calling it unreasonably broad.
As explained by the Board, “Routine discovery under 37 C.F.R. § 41.51(b)(1)(iii) is narrowly directed to specific information known to the responding party to be inconsistent with a position advanced by that party in the proceeding, and not broadly directed to any subject area in general within which the requesting party hopes to discover such inconsistent information.”
In determining whether to grant a request for additional discovery, the Board stated that the following factors should be taken into consideration:

  • 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 to demonstrate that the requested discovery is necessary in the interest of justice.
  • Litigation Positions And Underlying Basis: The Board has established rules for the presentation of arguments and evidence. Thus, asking for the other party’s litigation positions and the underlying basis for those positions is not necessary in the interest of justice.
  • Ability To Generate Equivalent Information By Other Means: Information 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.
  • Easily Understandable Instructions: The questions should be easily understandable. For example, ten pages of complex instructions for answering questions is prima facie unclear.
  • Requests Not Overly Burdensome To Answer: The requests must not be overly burdensome to answer, given the expedited nature of Inter Partes Review. Requests should be sensible and responsibly tailored according to a genuine need.

When taking the factors above into consideration, the Board found that Cuozzo’s discovery requests failed to meet the “necessary in the interest of justice” standard. For instance, with regard to requested items related to its potential assertion of secondary considerations of nonobviousness (i.e., long-felt but unresolved need, failure of others, commercial success, and copying by others), the Board concluded that the company failed to provide a threshold amount of evidence or reasoning tending to show beyond speculation that the information to be discovered would be “useful.”


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