April 14, 2015 — The PTAB issued an order granting in part a request for discovery by an IPR petitioner.
Certain types of “routine” discovery are available in a trial proceeding before the PTAB. Under 37 C.F.R. § 42.51(b)(1), routine discovery includes (i) any paper or exhibit cited in a paper or in testimony, (ii) cross-examination (deposition) of witnesses providing affidavits, and (iii) relevant information that is inconsistent with a position advanced by a party. Routine discovery is intended to be self-executing, and all parties have the burden to provide such discovery.i The rules provide that a party may move for “additional discovery” that includes other types of materials. In practice, however, it is very difficult to meet the high burdenii that the PTAB sets for obtaining additional discovery.
The petitioner in IPR2014-00727 was able to obtain substantial discovery — that the patent owner did not want to provide — by showing the discovery qualified as “routine.”iii The patent at issue in the IPR relates to aircraft enclosures for lavatories, closets, etc. having walls that are shaped to provide space for seats outside the enclosure:iv
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In its motion to compel discovery, the petitioner argued that the requested materials were inconsistent with a position the patent owner had advanced. In particular, the petitioner pointed to statements by the patent owner asserting that a person of ordinary skill in the art would not have applied previously-known recessed aircraft enclosure designs to the design of other enclosures.v With its motion to compel, the petitioner submitted evidence that a “KLM crew rest” design was based on a previous design of a recessed enclosure, together with evidence that the patent owner was aware of that KLM crew rest design.vi
The PTAB ordered the patent owner to produce, as routine discovery, documents that concerned development of the KLM crew rest.vii The PTAB also ordered production of documents that concerned development of the invention and that referenced other enclosures having relevant features (e.g., a recessed wall). Because the petitioner was able to show the requested materials were inconsistent with a position advanced by the patent owner, and show that the patent owner knew of and likely had those materials, the petitioner was able to obtain discovery without meeting the substantially higher burden necessary to obtain “additional discovery.”