By Matthew L. Cutler, Principal
Still confused about how much discovery you will be able to obtain in an IPR? Fear not, as two of the PTAB’s Administrative Patent Judges have weighed in with a primer on Inter Partes Review discovery. The PTAB blog entry provides a nice overview of “routine” and “additional” discovery, including some insights into the reasons why the Board believes it is constrained in its grant of additional discovery in IPR proceedings.
To that end, as our statistics have made clear, only 28% of Motions for Additional Discovery have been granted through the 2nd year anniversary of IPR practice. Of note in the PTAB’s blog posting is that this low percentage is due to several key constraining forces on the Board. First, the AIA legislative history makes clear that additional discovery is confined to “particular limited situations, such as minor discovery that PTO finds to be routinely useful, or to discovery that is justified by special circumstances of the case.” Second, statutory deadlines for completing IPR proceedings require a much more streamlined procedure than the broad discovery allowed in litigation. Third, the Board notes the fact that discovery is only allowed when in the “interests of justice.” Because this standard is slightly higher than the “good cause” standard, the Board is more constrained on this issue than on other issues it is called on to decide.
Lastly, the article provides a helpful synopsis of a number of other PTAB decisions relating to additional discovery that can be a helpful reference.