Patent owner’s tip # 8 to survive an instituted intellectual property right: further discovery is possible, but it must be carefully planned
Discovery procedures in inter partes Review proceedings (“DPI”), governed by 37 CFR § 42.51, have a more limited scope and timeframe than cases in district courts. There are three types of disclosure to the Patent Trial and Appeal Board (the “Board”): mandatory initial disclosures (pursuant to 37 CFR § 42.51 (a)); limited routine discovery (in accordance with 37 CFR § 42.51 (b) (1)); and limited further discovery (in accordance with 37 CFR § 42.51 (b) (2)). A limited additional discovery, in the absence of the agreement of the other party, can only be obtained if “such additional discovery is in the interests of justice”.
This blog post is the first of three to focus on additional discoveries before PTAB and discuss timing considerations. If you anticipate needing an additional discovery during an IPR proceeding, it is essential to act as early as possible, as timing is one of the factors the Office takes into account in deciding whether ‘the filing of an additional discovery request should be authorized.
As explained in the America Invents Act (AIA) Trial Practice Guide (“Practice Guide”) promulgated by the US Patent and Trademark Office (“PTO”), parties to an intellectual property right can generally seek the same types of discovery than those available under federal rules. of civil procedure. However, in granting a discovery request, the Commission is guided by the factors set out in Garmin Int’l, Inc. v Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 (PTAB March 5, 2013) (previous) (“Garmin”). The five Garmin the factors are:
- More than a possibility and a simple claim
- Contentious positions and underlying rationale
- Ability to generate equivalent information by other means
- Easy to understand instructions
- The response requests are not too heavy.
The fifth Garmin factor specifically takes into account the added burden of discovery to meet the IPR schedule, and states that “[r]equity must be sensible and responsibly adapted according to a real need. “ Identifier. at 6-7.
Before requesting the Additional Discovery Authorization, make reasonable and good faith efforts to reach an agreement with the other party.
Although it is not mandatory, it is beneficial to allow sufficient time to discuss your application with the other party before requesting authorization for an additional discovery from the Commission. Section 42.51 (b) (2) allows for further discovery if the parties come to an agreement. In addition, in the absence of a good faith effort to meet and speak, Council may deny your request. For example, in Google Inc. v Summit 6 LLC, IPR2015-00806, Paper 7, (PTAB April 16, 2015), the applicant had generally already agreed to provide an additional discovery to the patentee. However, since the patentee did not speak to or object to the applicant’s method of identifying the additional discovery prior to seeking authorization, the Board was not convinced that sufficient efforts had been made to reach an agreement and dismissed the patentee’s request as premature.
Prepare to file your additional discovery request as soon as possible.
Filing your claim with the Commission as soon as a problem arises will weigh in your favor, as the effect of the additional discovery on the timing is included in the fifth Garmin postman. The Commission may refuse to authorize a request if it affects the schedule, in particular if the schedule had already been extended. For example, in Palette Life Sciences, Inc. v Incept LLC, IPR 2020-00002, -00004, Paper 37 (PTAB 27 Oct 2020), the petitioner waited three months before seeking leave to file a further discovery request in response to the patent owner’s challenge to the petitioner’s expert. Council concluded that this was “problematic”, noting that it would not be possible to meet the schedule if permission was granted. More importantly, the Council “did not hear any reasonable explanation as to why the applicant waited”.
On the other hand, the Commission allowed a request for additional discovery in One World Technologies, Inc. v The Chamberlain Group, Inc., IPR2017-00126, Paper 20 (PTAB 15 December 2017), in part because there remained almost five months in the proceedings and therefore sufficient time to produce and examine the requested documents, which were easily identifiable, in the possession of the applicant , and could be easily produced electronically.
Look for additional findings only on mature issues.
While you will need to move quickly for additional discovery, make sure the request is ripe. The Board refused to allow additional discovery requests when the problem was not ripe. For example, in Sandoz Inc. v. Abbvie Biotechnology LTD., IPR 2017-02105, -02106, Paper 20 (PTAB 9 May 2018), the Board denied the petitioner’s request because the patentee had not yet filed a response to the petition, finding that the patentee’s response of the patent could raise certain problems.
Likewise, in Apple Inc. v Evolutionary Intelligence, LLC, IPR2014-00086, Paper 13 (PTAB 3 June 2014), the Commission, in addition to finding that the patentee’s additional discovery request was insufficient to show beyond speculation that anything useful would be discovered, also determined that the matter was not ripe for discovery because the Board had not made a final decision on the matter (which was necessary for the matter on which the patentee requested disclosure – estoppel towards a genuine interested party or a third party in the proceedings).
If you’ve waited to file an additional discovery request, make sure you have a good explanation and that your request is limited.
In the event that your request for an additional discovery is not made soon after a problem arises, limiting the scope of the additional discovery requested may help increase the likelihood that the Commission will authorize your request to file a petition. . For example, in Associated British Foods, plc v Cornell Research Foundation, Inc., IPR 2019-00577, -00578, -000579, -00580, -00581, -00582, paper 43 (PTAB October 4, 2019), patent holder six weeks after the commencement of the lawsuit to raise his request for further discovery with the Advice. However, since the additional discovery largely concerned specific documents that had been prepared and served in a proceeding in a district court (and therefore the patentee knew that such documents existed), the Board did not not felt that the discovery requests were too onerous to respond and granted the request.
Be prepared to explain why the Garmin factors weigh in your favor during the conference call.
Before filing a motion for further disclosure, you must seek leave from the Board and ‘you must be prepared to address the matter. Garmin factors and any other relevant factor ”in any conference call with the Board. The ability to make a convincing case that your request for further discovery should be authorized under Garmin provide the Council with the foundation it needs to exercise its discretion and grant your request.
In conclusion, it is important to be prepared to file your additional discovery request in a timely manner and to consider the impact of the scope of the discovery requested on the time remaining in the schedule. Be prepared to discuss in depth the reasons why Garmin the factors rule in your favor on the conference call with Council and, if so, explain why you may have delayed filing your application. Adherence to these guidelines will help increase the likelihood that the Board will accept your request to file an additional discovery petition and, ultimately, the petition itself.