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:

  1. 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 information is necessary in the interest of justice. The party requesting discovery should already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered.
  2. Litigation Positions And Underlying Basis – Asking for the other party’s litigation positions and the underlying basis for those positions is not necessary in the interest of justice. . .
  3. 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 interests of justice to have produced by the other party . . .
  4. Easily Understandable Instructions – The questions should be easily understandable. For example, ten pages of complex instructions for answering questions is prima facie unclear. . .
  5. Requests Not Overly Burdensome to Answer – The requests must not be overly burdensome to answer, given the expedited nature of inter partes review. . .

With respect to factor 1, the PTAB further explained that “useful” does not mean merely “relevant” and/or “admissible” – “useful” means “favorable in substantive value to a contention of the party moving for discovery.” Id. at 7.

Thus, the PTAB is likely to be very conservative in granting motions for discovery alleged to be “necessary in the interest of justice.” Parties considering moving for additional discovery should be prepared to provide evidence or reasoning tending to show beyond speculation that the information to be discovered will be “useful;” which appears to be a high hurdle.