The Patent Trial and Appeal Board (“PTAB”) rarely grants motions for additional discovery filed by a party in an inter partes review (“IPR”) proceeding. Typically, a party’s motion will be denied for failing to satisfy the burden under the established factors. The PTAB has also denied motions for additional discovery where the party failed to define the discovery requested with specificity or failed to identify why the discovery is necessary for the interest of justice. Thus, parties and attorneys should be aware of the factors the PTAB considers and the weight given to each factor.
A motion for additional discovery may be granted if the party demonstrates “that such additional discovery is in the interests of justice.” 37 C.F.R. § 42.51(b)(2); see also 35 U.S.C. § 316(a)(5) (requiring discovery in IPR proceedings to be limited to “what is . . . necessary in the interest of justice”). When determining whether additional discovery is in the interest of justice, the PTAB examines five factors. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26). The Garmin factors include: (1) more than a possibility and mere allegation that something useful will be discovered; (2) requests that do not seek other party’s litigation positions and the underlying basis for those positions; (3) ability to generate equivalent information by other means; (4) easily understandable instructions; (5) requests that are not overly burdensome to answer. Id.
The PTAB has also stated that to meet this heightened burden, the moving party must explain with specificity what discovery is being requested and why the discovery is necessary in the interest of justice. Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., Case IPR2014-00488, slip op. at 4 (PTAB Nov. 5, 2014)(Paper 25); Ventex Co., LTD v. Columbia Sportswear North America, Inc., Case IPR2017-00651, slip op. at 4 (PTAB Nov. 13, 2017) (Paper 32) (denying motion for additional discovery where patent owner did not “directly address its requests and explain what, specifically, they are likely to produce in response, or how the existence of the supplier agreement and certain emails indicates that other more probative documents exist”).
When assessing the Garmin factors, the PTAB generally does not afford each factor equal weight. Rather, the first and fifth factors tend to be those frequently addressed by the PTAB in its analyses, with the first factor generally being afforded more weight than the fifth.
Factor 1: More Than a Possibility and Mere Allegation
When examining the first Garmin factor, the PTAB has stated that the party “should already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered.” See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26). “Useful” in this context means “favorable in substantive value to a contention of the party moving for discovery,” not just “relevant” or “admissible.” Id. at 7. The moving party needs to put forth a “threshold amount of evidence tending to show that the discovery it seeks factually supports its contention.” General Electric Co. v. Transdata, Inc., Case IPR2014-01380, slip op. at 4 (PTAB Nov. 12, 2014) (Paper 15).
This factor carries a great deal of weight, as the PTAB has occasionally made a decision based on this factor alone. For example, in Apotex Inc. v. Novartis AG., Case IPR2017-00854, slip op. at 4-5 (PTAB Feb. 5, 2018) (Paper 47), the PTAB granted-in-part Petitioner’s motion by balancing the “strong showing under Garmin Factor 1” against Patent Owner’s arguments that the requests was unduly burdensome. Additionally, even when the discovery requests are not narrowly tailored, if the moving party presents sufficient evidence to show more than a possibility and mere allegation that something useful will be discovered, the PTAB has granted the discovery requests and merely limited their scope. See Samsung Electronics, LTD, v. Black Hills Media, LLC, Case IPR2014-00735, slip op. at 7 (PTAB Oct. 2, 2014) (Paper 17) (granting Patent Owner’s three interrogatories and two of its document requests but limiting their scope as the discovery requests were overly broad).
There is no clear line as to what amount of evidence the PTAB considers to be enough and what instead only amounts to mere speculation. The facts underlying each motion for additional discovery are generally decided on a case-by-case basis. Thus, when considering whether to draft a motion for additional discovery, it is important to consider what type of information is being sought and whether the party has some proof that the information (1) exists and (2) would be useful in the proceeding.
Factor 5: Requests Not Overly Burdensome to Answer
Although the first factor can outweigh the other factors, it remains important to submit discovery requests that are specific and not overly broad. The discovery requests must be narrowly tailored such that they do not cause an overdue burden on the non-moving party. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 7 (PTAB Mar. 5, 2013) (Paper 26); Ventex Co., LTD v. Columbia Sportswear North America, Inc., IPR2017-00651, slip op. at 5 (PTAB Nov. 13, 2017) (Paper 32) (denying request as not narrowly tailored where the request for production sought “[d]ocuments constituting or relating to communications involving [customer] and Petitioner that concern or relate to the [customer] Litigation.”).
The PTAB has granted motions for additional discovery where the discovery requests are narrowly tailored and few in number. See Arris Group, Inc. v. C-Cation Techs., LLC, IPR2014-00746, slip op. at 3 (PTAB July 24, 2014) (Paper 15)(granting motion where the Patent Owner made a very limited request for an indemnification agreement between Petitioner and a nonparty); Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., IPR2014-00488, slip op. at 4 (PTAB Nov. 5, 2014)(Paper 25)(finding the two document requests and single interrogatory narrowly tailored where they were limited to communications between Petitioner and nonparty “regarding preparation or filing of the [present] IPRs”); Ventex Co., LTD, V. Columbia Sportswear North America, Inc., Case IPR2017-00651, slip op. at 3-4 (PTAB Dec. 19, 2017) (Paper 40) (granting motion for additional discovery where Patent Owner requested production of “relevant testimony concerning secondary consideration of non-obviousness” and the requests were narrowly tailored).
When drafting a motion for additional discovery, discovery requests should be specific, narrow, and few in number. The party should be able to identify precisely the documents, information, or testimony being sought. It is generally not enough to merely identify the subject matter of the information sought, rather, the party should specifically identify the type of documents sought and the relevant time period, when possible.
Additionally, when assessing the fifth factor, the PTAB may also consider the timing of the discovery requests and their potential impact on the trial schedule. For example, in Wavemarket Inc. v. Locationet Systems Ltd., Case IPR2014-00199, slip op. at 8 (PTAB Aug. 11, 2014)(Paper 34), the PTAB denied the Patent Owner’s motion, stating that the “the requested discovery may place a significant burden on meeting the time schedule of inter partes review.” As to timing, it is important to ensure that when submitting discovery requests, the requests are (1) ripe and (2) timely. See Apple v. Evolutionary Products, Case IPR2014-00086, slip op. at (PTAB June 3, 2014) (Paper 13)(denying motion because “the issue is not ripe for discovery” as a final decision in the present proceeding has not been rendered and the district court cases are stayed); see also Douglas Dynamics, LLC v. Meyer Prods. LLC, Case IPR2015-01839, slip op. at 8 (PTAB July 26, 2016)(Paper 29) (finding that “delay in requesting additional discovery weighs against granting the motion” where patent owner waited over four months after institution to request authorization to file a motion for additional discovery).
While motions for additional discovery are rarely granted, there are instances where the PTAB has granted discovery requests. As such, when drafting a motion for additional discovery, parties should discuss the Garmin factors, paying particular attention to the first and fifth factors. Additionally, parties should be cognizant of the timing of a motion, making sure to request authorization to file a motion for additional discovery as soon as possible.