By Sue Gerber and Matt Johnson –
“The statutory provisions for inter partes reviews, post-grant reviews, and covered-business method patent reviews caution against overly broad discovery and provide the same considerations, including efficient administration of the Office and the ability of the Office to complete the proceeding timely.” College Prods., Inc. v. Intirion Corp., PGR2024-00003, PGR2024-00004, Paper 26 (PTAB Sept. 4, 2024). Against this statutory backdrop, the PTAB recently denied a Petitioner’s motion for additional discovery, finding that the request came too late and the Petitioner provided insufficient reasons to justify granting additional discovery out of time. Id.
In College Products, the Petitioner asserted in its Petition that an article coming out of Northeastern University was prior art. Id. at 4. In the Patent Owner’s Preliminary Response (“POPR”), the Patent Owner challenged the sufficiency of Petitioner’s evidence as to the public availability of the article. Id. at 5. The PTAB instituted review, and a month later, Petitioner filed its motion for additional discovery, seeking permission to serve a subpoena on Northeastern University to obtain additional evidence about the article’s public accessibility. Id. at 3. The PTAB denied the motion for several reasons.
First, the Petitioner filed its motion too late. Id. at 8. The PTAB explained that Petitioner’s need for the additional discovery was foreseeable, even before the Petition was filed. Id. at 6. But at least by the time that the Patent Owner raised the question of public accessibility in the POPR, Petitioner knew it needed discovery to prove the article was prior art, but did nothing about it for months. Id. at 8.
Second, the PTAB was not convinced that even if the motion were granted, the subpoena would yield helpful evidence. Id. at 11. The email correspondence between Petitioner and the university provided conflicting and inconclusive information about the article. Id. at 10-11. The university correspondent admitted she had no personal knowledge of the article’s publication and had “no documentation” to provide. Id. at 11. Given the speculative nature of the Petitioner’s request, the PTAB concluded that Petitioner offered only the “mere possibility of finding something useful,” which is insufficient to establish good cause for granting additional discovery. Id. at 10.
Third, the PTAB criticized Petitioner for failing to clearly describe exactly what discovery it was seeking by its motion:
To the extent these are the actual testimony and document requests that Petitioner would articulate in its discovery request, they are overly broad, uninstructive, vague and ambiguous. To the extent they are general summary of the questions, this is insufficient for the Board to evaluate in any meaningful way the efficiency and burden that would be placed on the University.
Id. at 11-12. Moreover, Petitioner failed to explain why it could not have obtained the information from other sources, such as the authors themselves. Id. at 12.
Takeaway: Parties seeking discovery from the PTAB should move promptly—as soon as it is foreseeable that discovery may be needed. Any motion requesting leave to serve discovery should clearly disclose the exact discovery being requested as well as concrete reasons why the discovery request is not a fishing expedition and the target is likely to be able to provide the information sought.
Matthew Johnson
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