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.