Discovery in PTAB Proceedings

At the federal district court the requesting party can simply lay out a reasoned basis for trying to seek certain categories of information. At the Board, though, an attorney needs to begin with a threshold piece of evidence as a starting point.

What happens in federal district court is that a legal team goes exploring, looking for anything that might show up that would be relevant to the case. The PTAB is different in that it doesn’t see itself as a district court and what it allows is discovery in order to reach a reasoned conclusion about the validity of the patent.

The Board is very sensitive to keeping the post-grant proceedings a more efficient, less expensive alternative to litigation and for that reason, the kind of discovery they permit is very different from what litigants are used to in district court.

There is a misconception about discovery at the PTAB; the board has a different standard and a different perspective that they’re going to apply in assessing whether discovery is appropriate in a particular case.

A legal team can get discovery to challenge a declarant, can get discovery to cross-examine a declarant and can get some evidence to confirm a position on which client or attorney already has evidence. It’s a very different perspective and starting point than in federal district court.

One of the more important factors has to do with showing more than a mere possibility or a mere allegation that certain facts exist. A client must have threshold evidence showing that something useful is going to come out of the process.

In sum, a client needs to have thought through its discovery needs with their attorneys. Knowing what has been done, what can be done, what needs to be done is important in all cases.