Process seeks evidence, which both sides obtain from each other in PTAB patentability challenges

To achieve fairness in any legal dispute, it is paramount for two parties to develop a fair record and be able to respond to arguments raised by the other side. In an America Invents Act (AIA) trial proceeding before the USPTO’s Patent Trial and Appeal Board (PTAB), this is the goal of a process called discovery.

During these trials, a third party (called a “petitioner”) may challenge the patentability or validity of the claims in an issued patent. The patent owner may defend the patentability of its patented claims, although it is always the challenger’s burden to prove its case.

Discovery allows the petitioner and patent owner to develop their respective arguments, as well as focus on the issues disputed, by seeking evidence—facts, documents, testimony, and other information. Discovery is needed when a party seeks information relevant to the issues of a proceeding that would not otherwise be publicly known or readily available.

Discovery before the PTAB is limited (more so than in federal district courts) to minimize the cost of AIA trials, as well as to ensure the trials are efficiently completed within a one-year statutory period.

Here is an explanation of the three ways offered by the PTAB to obtain evidence from the other side: (1) mandatory initial disclosures; (2) routine discovery; and (3) additional discovery.

Mandatory initial disclosures. The parties may agree to make initial disclosures to each other. Thereafter, a party automatically may get discovery of the information identified in the initial disclosures.

Routine discovery. A party is automatically required to provide certain types of evidence to the other side. Any exhibit cited in a paper (i.e., briefs such as the petition or patent owner response that cites evidence as exhibits) or in testimony (e.g., an expert declaration, which is an evidentiary exhibit) must be provided to the other side.

Any information that is inconsistent with a party’s position taken in a brief also must be provided to the other side. Additionally, a party may cross-examine, via a deposition, any witness that the other side is relying on and has presented direct testimony in the form of a declaration. There will be a transcript from the deposition that the party can submit into evidence.

Additional discovery. Following routine discovery, the parties may agree to additional discovery on their own. But if the parties do not agree, a party seeking more discovery must show that the additional discovery is in the “interests of justice” for an inter partes review to obtain it.

The PTAB applies a series of considerations in determining whether this standard is met. For example, the PTAB assesses whether the party seeking the information can otherwise reasonably figure out or assemble the information. Because the standard for additional discovery in an inter partes review is high, a party should tailor additional discovery requests to be as sensible and as specific as possible.

Besides limiting discovery possibilities in AIA trial proceedings, the PTAB sequences discovery so that each party has respective discovery periods, beginning with the patent owner.

Each side conducts discovery before being required to submit its papers, although petitions are submitted without any proceeding-specific discovery having occurred.

Learn more via the PTAB Trial Practice Guide: Or, consult for the PTAB’s rules relating to discovery in AIA proceedings.