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Patent Owner Tip #9 for Surviving an Instituted IPR: Issues Warranting Limited Additional Discovery

In our previous post we started talking about discovery procedures in inter partes review (“IPR”) proceedings under 37 CFR § 42.51 and, in particular, the scope and timing of seeking limited additional discovery under Rule 42.51(b)(2). We reviewed timing considerations and emphasized the importance of anticipating the need for additional discovery and, to the extent necessary, moving the Board as early as possible following Institution. We continue our discussion on obtaining limited additional discovery during IPR proceedings by identifying common circumstances that warrant moving the Board accordingly.

While Rule 42.51(b)(2) in no way restricts what type of additional discovery a party may seek, Rule 42.51(b)(2) may be particularly useful for seeking additional discovery under the Garmin factors on certain discrete issues.

Patent Owners may likely seek additional discovery to identify real parties in interest, to obtain evidence of secondary considerations or to obtain evidence supporting expert testimony. For identifying real parties in interest, a patent owner should move for additional discovery when the patent owner knows of information or evidence that demonstrates a third-party is a real party in interest and privy of petitioner, and the discovery it seeks would trigger the declaratory judgment or time bar under 35 U.S.C. § 315. In Arris Group Inc. v. C-Cation Technologies LLC, Case IPR2015- 00635 (PTAB, May 1, 2015), the patent owner requested production of indemnification agreements between petitioner and a third party to show privity between petitioner and the third party, thus showing that the petition is time-barred.  The Board granted patent owner’s motion for additional discovery because the Board was persuaded patent owner set forth a threshold amount of evidence sufficient to deem the very limited request for indemnification agreements necessary in the interest of justice.

For obtaining evidence of secondary considerations, a patent owner should move for additional discovery when public information shows that petitioner’s products have been commercially successful, and petitioner’s product embodies the challenged patent’s claims (as being obvious). While a patent owner may use public information to show petitioner’s product is commercially successful (and thus it seeks information that is not merely speculative), the additional discovery requests themselves must seek documents or information exclusively within the petitioner’s possession.

For obtaining evidence supporting expert testimony, patent owner may also move for additional discovery to prove validity of expert testimony that is either unclear or not sufficiently supported with evidence and is being cited by petitioner to show unpatentability of patent owner claims. In Corning Inc. v. DSM IP Assets B.V., IPR2013-00043, Paper 27 (PTAB June 21, 2013), the patent owner requested production of laboratory notebooks containing protocol details cited and relied upon by petitioner to demonstrate unpatentability of claims. The Board granted patent owner’s motion for additional discovery of the laboratory notebooks because the Board found that patent owner sufficiently demonstrated the request meets the interest of justice standard for additional discovery.

In conclusion, despite its limitations, a party should seek additional discovery in an IPR when it can set forth information beyond speculation that the documents, information or testimony it seeks supports a key issue in the proceeding and sufficiently meets all of the Garmin factors.


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Brad M. Scheller is an experienced patent litigator and strategic counselor to start-up ventures and established businesses in the mechanical and electrical arts, with a focus in EV and battery technologies and advising clients on patent portfolio growth, management and enforcement. He represents clients before the United States Patent and Trademark Office and as lead counsel in federal district court and appellate litigation across the country.

Monique Winters Macek

Special Counsel

Monique Winters Macek is an Associate whose practice is focused on medical devices, systems, and methods. Before joining Mintz, Monique served as a patent agent. She's registered to practice before the US Patent and Trademark Office.