A panel of the Patent Trial and Appeal Board has granted a patent owner’s motion for additional discovery relating to the prosecution history of an abandoned patent application assigned to the petitioner. In seeking additional discovery, patent owner, CBOE, argued that that during prosecution of one of petitioner ISE’s prior patent applications, ISE had made statements about a prior art reference that it had asserted against CBOE’s patent in the IPR proceeding. CBOE believed that ISE’s prior prosecution statements were inconsistent with its IPR positions. CBOE sought to obtain the file history from the USPTO. Evaluating CBOE’s request under the factors set forth in its Garmin decision, the Board agreed that additional discovery was necessary in the interest of justice. The Board found CBOE’s request to be narrow, easily understandable, not unduly burdensome, and that it demonstrated more than a mere possibility of uncovering something useful. Garmin requires the party requesting discovery to present evidence tending to show beyond speculation that in fact something useful will be uncovered. Further, the Board noted, ISO’s prior patent application was not published, and CBOE could not easily obtain the file history of that application. Nor was the discovery related to ISE’s litigation positions or the underlying basis for such positions—another factor under Garmin. The Board therefore granted CBOE’s motion for the additional discovery.

Since deciding Garmin last year, the Board has rarely granted requests for additional discovery. The handful of successful requests have related to limited discovery as to the real parties-in-interest, undisclosed experts, and lab notebooks relating to invalidating prior art. Other requests, including those for additional discovery on issues of secondary considerations, have thus far been denied.  

International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc., IPR2014-00097 (PTAB July 14, 2014).