The America Invents Act (AIA) provides for Inter Partes Review (IPR) proceedings and Post-Grant Review (PGR) proceedings in front of the Patent Trial and Appeal Board (PTAB). This article discusses the avenues for discovery in each type of proceeding.

Three types of “discovery” may be utilized during a PGR or IPR proceeding. The first, “mandatory initial disclosures,” may be agreed to between the parties, or otherwise sought by motion. An agreement to produce initial disclosures must be filed no later than the Patent Owner’s Preliminary Response. The initial disclosures should be filed as exhibits. The information contained in the initial disclosures is subject to discovery during the trial stage of an IPR or PGR proceeding.

The second type, “routine” discovery, includes: (1) any exhibit cited in a paper or in testimony (which must be served with the citing paper or testimony); (2) cross examination of affidavit testimony; and (3) any relevant information that is inconsistent with a position taken by the party during the proceeding (such information must be served concurrently with the filing of the documents or things containing the inconsistency).

The third type of discovery, “additional” discovery, may be agreed to by the parties. Where the parties do not agree, a party has the option of moving for additional discovery. In an IPR proceeding, a motion for additional discovery must satisfy the “interest of justice” standard. Thus, a mere hunch or speculation is not sufficient. Conversely, the Code of Federal Regulations does not expressly require the interest of justice standard for additional discovery in PGR proceedings. Rather, the standard for additional discovery in PGR proceedings is “good cause,” which appears to be a lower standard. Moreover, notwithstanding the above, discovery in a PGR proceeding is limited to evidence directly related to factual assertions advanced by either party in the proceeding.

Thus, when determining whether to file a request for post-grant review or file a declaratory judgment lawsuit or counterclaim in court, a party should consider that during a post-grant review proceeding, a party may not be able to obtain the discovery it needs to successfully challenge the validity of a particular patent. Utilizing a PGR or IPR proceeding should be considered carefully. As both are still in their infancy, both new proceedings carry a certain level of uncertainty. Moreover, certain details about navigating discovery during either proceeding have yet to be fleshed out.