Limits on Discovery in IPRs: No Fishing Expeditions for Information Relating to Infringement

Recent inter partes review (IPR) orders confirm that the scope of discovery in IPR is significantly narrower than the broad-ranging discovery available under the Federal Rules of Civil Procedure.

In Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR 2012-00001 (Paper No. 26) (Mar. 5, 2013), the Board denied the patent owner’s motion for additional discovery regarding the requestor’s product, finances, and litigation positions. The Board considered five factors for whether requested discovery was “necessary in the interests of justice” under 35 U.S.C. § 316(a)(5):

1. whether the request is based on “more than a possibility and a mere allegation” of “something useful;”
2. whether the discovery merely sought “litigation positions and underlying basis;”
3. whether the party requesting discovery had the “ability to generate equivalent information by other means;”
4. whether the instructions for answering discovery were “easily understandable;” and
5. whether the requests “were not overly burdensome to answer.”

The Board applied these same factors to discovery requests in Nichia v. Emcore, IPR2012-00005 (Paper No. 19) (Mar. 26, 2013).

Applying these factors in Garmin, the Board refused discovery on development, pricing, and commercialization of the petitioner’s products—evidence that Cuozzo (the patent owner) argued related to secondary considerations of non-obviousness, including long-felt need, failure of others, copying, and commercial success. Because Cuozzo had not shown that the discovery would be “favorable in substantive value to [its] contention[s],” the Board denied it. The Board noted Cuozzo could provide its own evidence of long-felt need and commercial success without Garmin’s information.

The Board also denied discovery of Garmin’s legal contentions, documents provided to Garmin’s expert, and documents Garmin intended to use at trial—common subjects for discovery in patent litigation. Noting that IPR rules provided “a proper time and place for each party to make its presentation,” the Board found no need for this additional discovery.

Garmin illustrates that patent owners in IPR may not obtain discovery regarding petitioner’s product, internal documents, or contentions. Thus, unlike a district-court or ITC proceeding, the patent owner may have to argue claim construction and validity without knowing how the petitioner’s product works. This information mismatch may provide a tactical advantage to the petitioner, who may tailor its claim construction positions to protect against later infringement arguments