Scope of Discovery

Authored by Steven S. Yu, M.D.

Discovery rulings in IPR proceedings so far reveal that the APJs are resisting any attempt at expansive litigation-type discovery. Two of the recent discovery rulings relate to the patent holder’s requests relating to objective evidence of non-obviousness. In Garmin International Inc. v. Cuozzo Speed Technologies LLC (IPR2012-00001), patent holder Cuozzo sought discovery for evidence of commercial success brought on by Garmin’s use of the patented feature. In particular, Cuozzo sought interrogatory answers, documents, as well as the deposition of a corporate representative (in the manner of a 30(b)(6) deposition under the Federal Rules) for information about the design, development, and commercialization of the patented feature in Garmin’s products, as well as Garmin’s own views about the commercial success attributable to the patented feature. The discovery requests were denied for a number of reasons, including Cuozzo’s failure to demonstrate a nexus between commercial success and the patented features.

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Stays of Litigation and ITC Investigations Pending IPRs

Authored by John R. Kenny and Scott Forman

District courts have ruled on a number of motions to stay litigation pending inter partes review (“IPR”), granting at least five unopposed, joint motions or stipulated orders; granting at least eleven opposed motions; denying at least twelve opposed motions; and partially granting at least five opposed motions (i.e., staying the case only until the PTAB decides whether to institute the IPR). In deciding these stay motions, district courts have used the three factor test previously set forth for stays pending reexamination proceedings:

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Parallel Inter Partes Review Proceedings

Authored by Michelle Carniaux

As reported in our blog post dated May 2, 2013, one way suggested by the USPTO to deal with the somewhat tight IPR petition page limit is to file multiple IPR petitions directed to different subsets of claims of a patent, rather than to petition for a waiver of the page limit.  The PTAB has now granted three pairs of such petitions.  See IPR2013-00048, -00049, -00052, -00053, -00064 and -00065.  Interestingly, the PTAB has not consolidated the proceedings that relate to the same patent.  Instead, the PTAB issued scheduling orders that coincide with each other so that oral arguments are heard on the same day.  See IPR2012-00048, Paper No. 15, 2 (May 13, 2013).   The possible benefits of allowing the proceedings to move forward in parallel  rather than consolidating the cases include allowing the parties to file less complicated papers (e.g., motions to amend and other papers in each proceeding may address smaller sets of claims within the page limit constraints), and allowing the PTAB to allocate additional time for itself for the proceedings.  It is likely the PTAB will expect the IPR parties to cooperate with each other regarding discovery in the parallel proceedings.  See CBM2012-00004, Paper No. 15 (February 22, 2013).

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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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