Atlanta Gas Light Company v. Bennett Regulators Guards, Inc.; Aker Biomarine AS, et al. v. Neptune Technologies and Bioressources Inc.

In two orders issued from the U.S. Patent and Trademark Office Patent Trial and Appeals Board (PTAB or Board) in unrelated proceedings, the PTAB denied requests for “additional” or “non-routine” discovery because the moving party failed to demonstrate that the discovery was “otherwise necessary in the interest of justice” and discussed the bounds of permissible discovery in inter partesreview (IPR) proceedings by denying Atlanta Gas Light Company v. Bennett Regulators Guards, Inc., IPR No. IPR2013-00453 (PTAB, Oct. 6, 2014) (Boucher, APJ); Aker Biomarine AS, et al. v. Neptune Technologies and Bioressources Inc., IPR No. IPR2014-00003 (PTAB, Oct. 6, 2014) (Green, APJ).

An important congressional objective of the America Invents Act (AIA) was to provide a quick and cost-effective alternative to federal district court patent litigation.  With that goal in mind, the statute and rules only provide for limited discovery in AIA proceedings.  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.  The PTAB considers various factors to determine whether “additional” or “non-routine” discovery is “necessary in the interest of justice,” including whether (1) the request is based on more than a mere possibility of finding something useful, (2) the request does not seek the litigation positions of the other party, (3) the information is not reasonably available through other means, (4) the request is easily understandable, and (5) the request is not overly burdensome to answer.

In Atlanta Gas, the patent owner sought to exclude deposition testimony (that was taken as routine discovery) based on an allegation that the court reporter was biased, citing an alleged contractual relationship between the court reporter and the petitioner.  The petitioner submitted a declaration in opposition, which under the rules permitted the patent owner to depose that declarant.  But the patent owner also sought document production (i.e., additional discovery), which the PTAB denied.  The PTAB found that the patent owner had not demonstrated that the information sought (i.e., the existence of a contractual relationship) could not be obtained through cross-examination of the declarant, which was already permitted.

In Aker, the petitioner sought several documents from the patent owner—as “additional discovery”—that the petitioner was aware of from a U.S. International Trade Commission investigation.  These documents included deposition testimony that the petitioner alleged to contain testimony inconsistent with positions taken by the patent owner.  Although the PTAB denied the request for documents, it reminded the parties that if such documents containing inconsistencies existed, those documents were already required as “routine discovery” (as long as they were not protected by legally recognized privileges).

Practice Note: While the PTAB’s order in the Aker IPR may be interpreted as already directing the patent owner to provide the requested documents because it may be required to under the rules, the PTAB seems to leave it to the patent owner to decide if such documents contain inconsistent positions and are discoverable.  Moreover, the PTAB does not address what recourse the petitioner may have if the patent owner fails to honor its routine discovery obligations.  Here, the motion to compel was stylized as a motion to compel additional discovery, which may be why the motion was ultimately denied.  In seeking discovery in PTAB proceedings, a party must carefully consider whether to refer to the discovery sought as “routine” or “additional” under the rules.  While routine discovery is required (and a motion should be granted if it is indeed routine), a party should not expect to receive additional discovery without a compelling justification for it.