Availability of Discovery in Inter Partes Review

Authored by Michelle Carniaux

The scope of discovery available in inter partes review is significantly narrower than the scope of discovery available in district court litigation. Under 35 U.S.C. § 316(a)(5), discovery is limited to the deposition of witnesses submitting affidavits or declarations, and “what is otherwise necessary in the interest of justice.”

In a recent decision in trial IPR2012-00001 (Paper 26, 6-7, March 5, 2013), the Patent Trial and Appeal Board (PTAB) set forth the following factors it considers “important” for determining whether or not the statutory standard “necessary in the interest of justice” is met:

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