Skip to main content

Patent Owner Tip #8 for Surviving an Instituted IPR: Additional Discovery is Possible, but Should be Carefully Planned

Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court.  There are three types of discovery at the Patent Trial and Appeal Board (the “Board”): mandatory initial disclosures (pursuant to 37 CFR § 42.51(a)); limited routine discovery (pursuant to 37 CFR § 42.51(b)(1)); and limited additional discovery (pursuant to 37 CFR § 42.51(b)(2)).  Limited additional discovery, absent agreement by the other party, may only be obtained when “such additional discovery is in the interests of justice.” 

This blog post is the first of three focusing on additional discovery before the PTAB, and addresses timing considerations.  If you anticipate needing additional discovery during an IPR proceeding, it is crucial to move as soon as possible, as timing is one of the factors the Board considers when determining whether to authorize the filing of a motion for additional discovery.

As explained by the America Invents Act (AIA) Trial Practice Guide (“Practice Guide”) promulgated by the U.S. Patent and Trademark Office (“PTO”), parties to an IPR can generally seek the same types of discovery available under the Federal Rules of Civil Procedure.  However, in granting a request for discovery, the Board is guided by the factors set forth in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 (P.T.A.B. Mar. 5, 2013) (precedential) (“Garmin”).  The five Garmin factors are:

  1. More Than A Possibility And Mere Allegation
  2. Litigation Positions And Underlying Basis
  3. Ability To Generate Equivalent Information By Other Means
  4. Easily Understandable Instructions
  5. Requests Not Overly Burdensome To Answer.

The fifth Garmin factor specifically considers the additional discovery’s burden on meeting the time schedule of IPR, and states that “[r]equests should be sensible and responsibly tailored according to a genuine need.”  Id. at 6-7.

Prior to requesting authorization for additional discovery, make reasonable, good faith efforts to reach agreement with the other party.

Although not required, it is beneficial to build in sufficient time to discuss your motion with the other party before seeking authorization for additional discovery from the Board.  Section 42.51(b)(2) allows for additional discovery if the parties agree between themselves.  Further, absent a good faith effort to meet and confer, the Board may deny your request. For example, in Google Inc. v. Summit 6 LLC, IPR2015-00806, Paper 7, (P.T.A.B. Apr. 16, 2015), Petitioner had generally already agreed to provide Patent Owner additional discovery.  However, since Patent Owner did not confer with Petitioner or object to Petitioner’s method of identifying the additional discovery prior to requesting authorization, the Board was unpersuaded that sufficient efforts to reach an agreement had been made and denied Patent Owner’s request as premature. 

Prepare to file your request for additional discovery as soon as possible.

Filing your request with the Board as soon as an issue arises will weigh in your favor, as the effect of the additional discovery on meeting the time schedule is encompassed within the fifth Garmin factor.  The Board may decline to authorize a request if it impacts the schedule, particularly if the schedule had already been extended.  For example, in Palette Life Sciences, Inc. v. Incept LLC, IPR 2020-00002, -00004, Paper 37 (PTAB Oct. 27, 2020), Petitioner waited three months before requesting authorization to file a motion for additional discovery in response to Patent Owner’s challenge to Petitioner’s expert.  The Board concluded was “problematic,” noting it would not be possible to adhere to the time schedule if authorization was granted.  Importantly, the Board “did not hear any reasonable explanation as to why Petitioner waited.”

In contrast, the Board granted a motion for additional discovery in One World Technologies, Inc.  v. The Chamberlain Group, Inc.,  IPR2017-00126, Paper 20 (P.T.A.B. Dec. 15, 2017), in part because there were nearly five months remaining in the proceeding and thus ample time to produce and consider the requested documents, which were easily identifiable, in Petitioner’s possession, and could be easily produced electronically. 

Seek additional discovery only on issues that are ripe.

While you should move quickly for additional discovery, ensure that the request is ripe. The Board has declined to authorize requests for additional discovery where the issue was not ripe.  For example, in Sandoz Inc. v. Abbvie Biotechnology LTD., IPR 2017-02105, -02106, Paper 20 (P.T.A.B. May 9, 2018), the Board denied the Petitioner’s request because Patent Owner had not yet filed a Response to the Petition, reasoning that Patent Owner’s Response may moot certain issues.

Similarly, in Apple Inc. v. Evolutionary Intelligence, LLC, IPR2014-00086, Paper 13 (P.T.A.B. June 3, 2014), the Board, in addition to finding that Patent Owner’s request for additional discovery was insufficient to show beyond speculation that something useful would be discovered, also determined that the issue was not ripe for discovery because the Board had not rendered a final decision in the matter (which was required for the issue that Patent Owner sought discovery on – estoppel with respect to a real party-in-interest or a privy in proceedings). 

If you waited to file a request for additional discovery, make sure you have a good explanation and that your request is limited.

In the event that your motion for additional discovery is not made promptly after an issue arises, limiting the scope of the additional discovery being requested may help increase the likelihood that the Board authorizes your request to file a motion.  For example, in Associated British Foods, plc v. Cornell Research Foundation, Inc., IPR 2019-00577, -00578, -000579, -00580, -00581, -00582, Paper 43 (P.T.A.B. Oct. 4 2019), Patent Owner six weeks after trial was instituted to raise its request for additional discovery with the Board.  However, because the additional discovery largely targeted specific documents that had been prepared and served in a district court proceeding (and thus Patent Owner knew such documents existed), the Board did not perceive the discovery requests to be overly burdensome to answer, and granted the request. 

Be prepared to argue why the Garmin factors weigh in your favor during the conference call.

Prior to filing a motion for additional discovery, you must seek authorization with the Board and “should be prepared to address the Garmin factors and any other pertinent factors” during any resulting conference call with the Board. The ability to persuasively argue that your request for additional discovery should be authorized under Garmin will provide the Board with the basis it needs to exercise its discretion and grant your request.

In conclusion, it is important to be prepared to file your request for additional discovery in a timely manner, and to consider how the scope of the requested discovery may impact the remaining time in the schedule.  Be prepared to substantively discuss why the Garmin factors rule in your favor at the conference call with the Board, and, if relevant, explain why you may have delayed in filing your request.  Adhering to these guidelines will help increase the likelihood that the Board grants your request to file a motion for additional discovery, and ultimately the motion itself.


To learn more from the Mintz IP team, follow us on LinkedIn and check out our Exclusive Rights podcast.


Subscribe To Viewpoints


Michael C. Newman represents Mintz clients in intellectual property disputes, with a focus on Section 337 investigations before the US International Trade Commission. His experience spans all phases of litigation. Michael successfully represents patent owners in inter partes review proceedings.

Nana Liu


Nana Liu is a Mintz attorney who focuses on intellectual property litigation for life sciences companies. She handles cases in federal courts, the US Court of Appeals for the Federal Circuit, and the International Trade Commission (ITC), as well as Hatch-Waxman pharmaceutical cases.