The Patent Trial and Appeal Board recently issued two decisions—Arris Group v. C-Cation Technologies and Westlake Services v. Credit Acceptance Corp.—that explain what types of discovery are allowed in American Invents Act proceedings and what issues petitioners can raise in follow-on petitions. The Board used the Arris decision to emphasize that it will likely only grant limited requests for discovery and that litigants are advised to seek only specific documents rather than a broad range of information. The decision also makes clear that in order for a discovery request to be granted by the PTAB, litigants need to make a strong case that the documents will be useful to the outcome of the case. Law360 contacted Finnegan attorney Maureen D. Queler for her thoughts. Queler said, "It shows the detailed analysis that has to be done when requesting discovery. It almost requires prearguing what you're going to use the discovery for."
In the Westlake decision, the Board provided guidance about what petitioners can argue if they file one petition challenging a patent, and then file a "follow-on" petition challenging the same patent using different arguments. "There is an increasing number of follow-on petitions that the board is handling now, so this gets out guidance that allows people to understand when certain issues can be raised," Queler said. She added, "To get a follow-on petition instituted, petitioners should have similarly strong arguments about why the new petition is substantially different."