In a Boardside Chat on July 14, two PTAB judges provided insights regarding discovery best practices and strategies in AIA proceedings and alluded to upcoming rule changes that may change the standard for seeking discovery. The panel featured Lead Judge Grace Obermann and Judge Justin Arbes.
The judges referred to the three types of discovery available in PTAB proceedings under 37 C.F.R. § 42.51: (1) initial disclosures; (2) routine discovery; and (3) additional discovery. Routine discovery includes exhibits cited in the record, depositions of expert witnesses submitting declarations in the proceeding, and inconsistent materials. Additional discovery is only available upon agreement of the parties or permission of the Board. In reviewing motions for additional discovery, the Board considers the following five “Garmin” factors:
- Whether there is more than a possibility and mere allegation that something useful will be found;
- Whether the request is merely seeking early identification of opponent’s litigation positions;
- Whether the party requesting discovery can generate the information without discovery;
- Whether the request is easy to understand; and
- Whether the request is overly burdensome.
Seeking additional discovery
Judge Obermann emphasized that in deciding whether to allow additional discovery, the Board considers the direction of 37 C.F.R. § 42.1(b) that the rules are to “be construed to secure the just, speedy, and inexpensive resolution of every proceeding.” To that end, Judge Obermann focuses on three factors when evaluating discovery requests: (1) whether the requesting party has established a “legitimate need” for the information; (2) the burden and cost to the party from whom discovery is sought; and (3) how the requested discovery would impact the timeline for the proceeding.
When asked to identify best practices for requesting discovery, the judges said that parties should cooperate to reach a compromise before resorting to contacting the Board, avoid confrontational positions, and seek discovery as early as possible in each case.
Parties should cooperate to reach a compromise before resorting to contacting the Board.
The judges noted that the Board is seeing an increase in allowed discovery, particularly regarding the real-party-in-interest in PTAB proceedings, but they added that to be successful in seeking such discovery, parties must narrowly tailor their requests.
Depositions: Instructions not to answer
Regarding deposition disputes, the judges agreed that the Board will rarely sustain instructions to an expert witness not to answer a question, but will consider these issues on a case-by-case basis. Parties are encouraged to seek a conference call with the Board when the issue arises.
Forthcoming rule changes
The judges alluded to proposed rule changes and modifications to the Trial Practice Guide, which they suggested will include proposed revisions to the discovery rules. Without tipping their hands as to the proposed changes, the judges commented that the Board considered various revisions including permitting significantly more discovery, continuing to employ the Garmin factors, and permitting even less discovery.
Stay tuned. The proposed new changes are expected to be announced before the next Boardside Chat on Tuesday, August 4.