AIA Post Issuance Proceedings – Additional Discovery Requested in Inter Partes Review Must Be “Surgically” Tailored

In comparison to discovery obtainable in federal district court proceedings, discovery obtainable in inter partes review (IPR) proceedings conducted by the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) under the America Invents Act (AIA) is sharply limited. Aside from “mandatory initial disclosures” agreed to by the parties and “routine discovery” largely limited to the cross-examination of experts, additional discovery must be requested by motion to the PTAB, with a showing that such discovery is required “in the interests of justice.” If the request is denied, the moving party can request the motion to be reheard by the PTAB by identifying all matters the party believes the Board misapprehended or overlooked.

In a recent decision on a motion for additional discovery by patent owner Steuben Foods, Inc., the PTAB denied the motion finding that Steuben’s request failed to meet the “interests of justice standard” under the so-called “Garmin factors”. The Garmin factors require that the requested discovery: 1) rises above providing “more than a possibility and mere allegation” of something that would be useful, 2) is not directed to the opposing party’s litigation positions and bases for those positions, 3) is not directed to information that can be equivalently obtained by other means, 4) is clear and understandable, and 5) is not overly burdensome to answer.

In its motion, Steuben had submitted three production requests and two interrogatories which it asserted as necessary to prove that GEA Procomac S.p.A (Procomac) and GEA Group were real parties in interest not identified by petitioner GEA Process Engineering, Inc. (GPNA) in the filed IPR petition. Steuben argued that, because Procomac and GEA Group had not been identified in the IPR petition and had effectively been served with a lawsuit more than one year before the filing of the petition, the jurisdictional basis required for instituting the IPR under 35 U.S.C. §§ 312(a), 315(b) was missing. Steuben asserted that its requested discovery related to certain admissions made by GEA Group and Procomac in concurrent district court actions that evidenced their status as real parties in interest

In its motion for rehearing following the PTAB’s denial of its motion for additional discovery, Steuben asserted that the PTAB misapprehended and/or overlooked probative evidence relating to the admissions made by GEA Group and Procomac. In its denial of the motion for rehearing, the PTAB disagreed, stating that its denial was based primarily on the overbreadth of Steuben’s proposed production requests and interrogatories:

As explained in our Decision, the additional discovery requested by Patent Owner is not adequately tailored specifically to GEA’s statement made in the concurrent District Court proceeding, nor to discovery concerning Procomac’s “control and/or funding.” … For instance, proposed Request 1 refers generally to “engagement and/or retainer agreement(s) between Pillsbury Winthrop Shaw Pittman LLP and GPNA, Procomac, and/or GEA Group,” and is not related necessarily to the filing of the petition in these proceedings. … With regard to payment of money, proposed Request 2 inquires generally and not specifically about legal bills issued by Pillsbury Winthrop Shaw Pittman LLP for legal services performed in connection with this proceeding.

(Citations omitted)

The PTAB further commented that “some level of additional discovery might be justified if Patent Owner presented an adequate foundation for discovery that was sufficiently narrowly tailored to GEA’s statement in the District Court proceeding and to Procomac’s ‘control and/or funding.’”

In sum, this PTAB decision signals that successful movants for additional discovery in IPR proceedings will be required to provide an adequate and specific factual foundation in accordance with the Garmin factors, and will not be permitted to stray very far from this foundation in formulating specific discovery requests.

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