In Garmin Int’l Inc. v. Cuozzo Speed Techs. LLC, IPR 2012- 00001, the Patent Trial and Appeal Board (“PTAB”) for the U.S. Patent and Trademark Office narrowly interpreted two discovery rules for the new inter partes review (“IPR”) procedure created by the America Invents Act.

Under the first rule, “routine discovery” requires disclosure of information that a party knows is inconsistent with a position it has taken in the IPR. The PTAB held that the file histories of prior art patents were not “routine discovery” because the petitioner had not relied on them in its petition, the petitioner did not know of information within them that was inconsistent with positions it had taken in the IPR, and the file histories may not include anything inconsistent. The PTAB stated that the patentee was not actually requesting information known to the petitioner to be inconsistent, but rather was casting a wide net with the hope of discovering such inconsistent information.

Under the second rule, “additional discovery” consists of any other information not in “routine discovery” that is “necessary in the interest of justice” and requires PTAB authorization. The PTAB explained that to be authorized, additional discovery must be more than just relevant or admissible. It must be “useful,” meaning “favorable in substantive value to a contention of the party moving for discovery.” The PTAB rejected many of the patentee’s discovery requests for additional discovery relating to secondary considerations of nonobviousness because the patentee did not provide a threshold amount of evidence or reasoning to show how the information would be useful. Without that threshold level, the PTAB considered the patentee’s requests to relate to potential assertions that were no more than speculation. It also rejected discovery requests relating to commercial success because the patentee made an insufficient showing of the nexus between the claimed invention and the patentee’s discovery requests. In addition, it rejected requests relating to the failure of others because the patentee did not show that any skilled artisan having knowledge of the pertinent prior art had tried but failed to solve a problem related to the claim invention.