Recently, APJs Bonilla and Snedden authored a post on the USPTO AIA Blog entitled “Routine and Additional Discovery in AIA Trial Proceedings: What is the Difference?” Their post provides some meaningful insight into how the PTAB approaches routine and additional discovery and cites numerous decisions that may be useful to practitioners.
The APJs explain that “routine discovery” under Rule 42.51(b)(1)(i) has its limitations. While exhibits cited in a paper or testimony must be produced, no requirement exists for a party to create or provide materials that were not cited. Nor are parties required to produce materials that a party or witness considered in preparing the paper or the testimony.
The APJs note that “routine discovery” under Rule 42.51(b)(1)(ii) requires a party relying on a witness’s testimony by declaration or affidavit to make that witness available for cross-examination. “Normally, the burden and expense of producing a witness for cross-examination falls on the party presenting the witness.”
The APJs also address “routine discovery” under Rule 42.51(b)(1)(iii), which requires production of relevant information inconsistent with a position advanced by a party. They explain that the Rule is “narrowly directed” to information known by the party to be inconsistent with a position it has advanced and does not provide for broad discovery whereby the requesting party hopes to discover inconsistent information.
Regarding “additional discovery,” the APJs state that the “interest of justice” standard applied in IPRs is viewed as a “slightly higher” standard than the “good cause” standard for PGRs, including CBMs, reflecting “the more limited scope of issues raised in IPR petitions.”
The APJs discuss the five factors outlined in Paper 26 of Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC (IPR2012-00001) for evaluating whether additional discovery in an IPR is “necessary in the interest of justice” and cite a variety of decisions applying the Garmin factors. Though most of the cited decisions have not been deemed representative orders or decisions by the PTAB, they highlight the kinds of “additional discovery” that may be available. For example, the APJs cite Paper 66 from Apple Inc. v. Achates Reference Publ’g, Inc. (IPR2013-00080), granting discovery of emails between experts that were relied upon as a basis for their opinions.