Alert
Alert
08.21.12
Discovery may perhaps be one of the most difficult items for clients, lawyers, and their adversaries alike to deal with, particularly in patent litigation. In its newly issued rules for trial proceedings before the Patent Trial & Appeal Board (“the PTAB”), the U.S. Patent and Trademark Office has attempted to strike a better balance between disclosure of the information needed to properly prepare for and litigate the proceeding, and the costs of obtaining and exchanging such information.
In traditional U.S. District Court litigation, it is difficult to predict the scope of discovery, the volume of documents/information to be dealt with, and the number of custodians/witnesses at the very outset of the case. This in turn injects a high degree of uncertainty into the case, particularly when setting early budget discussions and case estimates. The nature of a patent case only exacerbates this problem, as the issues touch upon many aspects of a company’s operations: product development, manufacturing, marketing and sales, finance, etc. Conversely, in the existing inter partes reexamination proceedings before the USPTO, no discovery was available at all. While this kept costs down, the level of information exchanged was at a bare minimum, and limited to whatever the parties themselves could find on their own and chose to include in their respective filings. Although the costs were dramatically lower, the fact that: (i) declarant testimony could be filed without the scrutiny of cross-examination; and (ii) documents revealing inconsistencies need not be produced, were viewed as significant shortcomings of inter partes reexamination proceedings.
The new discovery rules set forth in 37 CFR 42.51-41.65 are applicable to all four types of trial proceedings at the USPTO: inter partes review, post-grant review, covered business method post-grant review proceedings, and derivation proceedings. Concurrently with the new rules, the USPTO also issued its Office Patent Trial Practice Guide as a reference.
Rule 42.51 provides for three general categories of discovery: (a) mandatory initial disclosures, (b) routine discovery, and (c) additional discovery. The first two categories are relatively narrow, e.g., information similar to the initial disclosures served in litigation, production of cited exhibits, cross-examination of declarant testimony, and information that is inconsistent with a position advanced by a party. The third category covers any other type of information, but is not available as a matter of right and can only be sought by agreement, or by motion seeking leave from the PTAB. This third category is generally the opposite of District Court litigation, where the party responding to discovery requests typically must object to the requested discovery, and may need to file a protective order to preclude such discovery. For all three categories, the documents or things must either be produced or made available for inspection and copying within the United States, unless the PTAB orders to the contrary. Rule 42.51(c).
Download: USPTO Trials: Understanding the Scope and Rules of Discovery