The America Invents Act introduced three new proceedings for challenging the validity of patents. The proceedings—inter partes review, post-grant review and a transitional program for covered business-method patents—culminate in an oral hearing before the Patent Trial and Appeal Board. The hearing, held before a panel of administrative patent judges, is followed by a written decision. Before the hearing, the parties may engage in limited discovery to prepare their positions. But without agreements among the parties, additional discovery requires a motion and leave from the board.

Each of these proceedings shares similar procedural characteristics. When the board grants a petition to institute a proceeding, it will concurrently provide a scheduling order specifying due dates and different discovery periods for the petitioner and patent owner. A typical scheduling order will first provide the patent owner with a discovery period before a due date for filing a response to the board’s decision to grant the petition and motion to amend the claims of its patent. The patent owner may begin deposing the petitioner’s declarants during this discovery period, which begins upon institution of the proceeding.

Next, the petitioner will have a discovery period before a due date for filing a petitioner’s reply to the response and an opposition to any amendments offered by the patent owner. During this discovery period, the petitioner may depose the patent owner’s declarants. Finally, the patent owner will have a discovery period before a due date for filing a reply to the petitioner’s reply and opposition. The patent owner may depose the petitioner’s declarants during this final discovery period.

After the discovery periods conclude, the parties may file motions to exclude any evidence believed to be inadmissible. The board will generally evaluate admissibility of evidence using the standards established in the Federal Rules of Evidence.

During the discovery periods, the parties are permitted routine discovery without board authorization. 37 C.F.R. 42.51(b)(1). Routine discovery, however, is limited to certain circumstances. Specifically, each party must serve any exhibit cited in a paper or in testimony with the citing paper or testimony. 37 C.F.R. 42.51(b)(1)(i). Additionally, each party may cross-examine the other side’s declarants during their respective discovery periods. 37 C.F.R. 42.51(b)(1)(ii). Finally, a party must serve relevant information that conflicts with a position it advanced during the proceeding. 37 C.F.R. 42.51(b)(1)(iii).

Without agreement among the parties, any additional discovery requires a motion and board approval. 37 C.F.R. 42.51(b)(2). In an inter partes review proceeding, the board applies an interests-of-justice standard in deciding whether to grant additional discovery. In post-grant review and covered business-method patent proceedings, additional discovery is limited to evidence directly related to factual assertions advanced by a party, and the board applies a less restrictive good-cause standard to evaluate discovery motions.

In comments regarding board practice, the U.S. Patent and Trademark Office indicates that these standards are “closely related.” But the interests-of-justice standard is a slightly higher standard than good cause. A good-cause standard requires a party to show “a specific factual reason to justify the needed discovery.” In contrast, under an interests-of-justice standard, the board would look at all relevant factors and consider whether the additional discovery is necessary in light of the “totality of the relevant circumstances.”

Guidance from the board

In recent discovery orders, the board has emphasized that an important congressional objective in passing the America Invents Act was to provide quick and cost-effective alternatives to federal-court patent litigation. To accomplish these goals, Congress limited the scope of discovery. Therefore, the board has said it will take a conservative approach in granting leave for additional discovery. Its recent discovery orders have been in keeping with such an approach.

In Garmin International, Inc. v. Cuozzo Speed Technologies LLC (IPR2012-00001, Paper No. 26, March 5, 2013), an inter partes review proceeding, Cuozzo, the patent owner, proposed document requests and interrogatories, and requested a deposition of a corporate witness. All of Cuozzo’s requests were denied by the board.

The board explained that none of Cuozzo’s document requests and interrogatories qualified as routine discovery. Cuozzo had requested file histories of prior-art patents relied on by Garmin in its petition for inter partes review. But the board said the request was unreasonably broad because Garmin had not relied on the file histories in its petition.

Cuozzo’s other discovery requests also did not qualify as routine discovery. The board characterized those requests—which related to its assertion of secondary considerations of nonobviousness—as seeking to cast “a wide net directed to broad classes of information which may not include anything inconsistent with positions taken by Garmin.”

The board next considered whether Cuozzo’s requests qualified as additional discovery under the interests-of-justice standard. In denying the requests under this standard, the board applied a five-factor analysis.

First, the requesting party must demonstrate more than a possibility and mere allegation of finding something useful. The requesting party should possess evidence “tending to show beyond speculation that in fact something useful will be uncovered.” The board said Cuozzo’s requests, which mainly related to its assertion of secondary considerations of nonobviousness, offered nothing more than speculation that Garmin had evidence of the nature Cuozzo sought.

Second, seeking the other party’s litigation positions and the underlying basis for those positions is not necessarily in the interest of justice. Cuozzo requested documents that Garmin intended to rely on at trial or that Garmin provided or intended to provide to an expert witness or declarant. The board found these requests improper, noting the rules for presenting arguments and evidence would afford Cuozzo an opportunity to depose Garmin’s witnesses.

Third, it is not in the interest of justice to allow discovery requests for information a party can obtain or discern on its own. For example, the requested file histories of prior-art references are publicly available. Additionally, Cuozzo did not adequately explain why it needed Garmin’s views to establish its assertions regarding secondary considerations of nonobviousness. Cuozzo, the board said, could develop these positions on its own or through the use of experts.

Fourth, interrogatories and their instructions must be easily understandable. The board noted that 10 pages of complex instructions for answering questions are “prima facie unclear.” Cuozzo’s instructions, however, which were two pages long, were deemed easily understandable.

And, fifth, discovery requests cannot be overly burdensome to answer. Under this factor, the board said it looks to the financial burden, burden on human resources and burden on meeting the time schedule of the proceeding. The board concluded that the high cost to respond to Cuozzo’s requests and the breadth of the requests did not comport with this factor.

The board also denied Cuozzo’s request for a deposition of a corporate representative of Garmin. The deposition was to cover many of the same topics addressed in Cuozzo’s interrogatories and document requests and, therefore, did not meet the interests-of-justice standard for the same reasons as Cuozzo’s other requests.

In another order, in a proceeding resulting from the joinder of two inter partes review proceedings, in Microsoft Corp. v. Proxyconn Inc. (IPR2012-00026 and IPR2013-00109, Paper No. 32, March 8, 2013), the Board denied a motion by Proxyconn for additional discovery regarding secondary considerations of nonobviousness.

Proxyconn, the patent owner, sought discovery pertaining to the Microsoft Windows Server product, which it alleged infringed its patent and was commercially successful. The board noted that “[e]vidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.”

To establish a proper nexus, Proxyconn needed to offer “proof that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” Although “a conclusive showing of nexus is not necessary,” some showing of relevance was required and Proxyconn’s showing was insufficient.

In conclusion, although limited discovery is available in board proceedings, additional discovery requires a motion and board approval. As initial board orders demonstrate, parties who request additional discovery face a high burden. In deciding whether to pursue a board proceeding, a petitioner should carefully evaluate the evidence it will need from the patent owner and consider whether board discovery rules are likely to permit the necessary discovery.

Anthony J. Lombardi is an attorney at Finnegan, Henderson, Farabow, Garrett & Dunner, who practices patent litigation and patent prosecution. He may be reached at