PTAB decisions
PTAB Decisions on Evidence and Discovery
These notes cover PTAB orders on additional discovery, motions to seal, motions to exclude and other evidentiary questions, including the Garmin factors for additional discovery in inter partes review.
Discovery in AIA trials is narrower than in district court. Routine discovery covers cited exhibits and cross-examination of declarants; anything more needs Board authorization under an interests-of-justice standard (IPR) or a good-cause standard (PGR and former CBM review). The notes here show how the Board has applied those standards.
Designations and rules change. Before relying on any decision, confirm its current status on the USPTO PTAB pages.
Decisions in this category
- Bloomberg v. Markets-Alert (CBM2013-00005, Paper 32): The Good Cause Standard for Additional DiscoveryCBM2013-00005
- Corning v. DSM (IPR2013-00043, Paper 27): Additional Discovery of Laboratory NotebooksIPR2013-00043
- Garmin v. Cuozzo (IPR2012-00001, Paper 26): The Five Additional Discovery FactorsIPR2012-00001
- Garmin v. Cuozzo (IPR2012-00001, Paper 34): What a Motion to Seal Must ContainIPR2012-00001
- Garmin v. Cuozzo (IPR2012-00001, Paper 36): Sealing Personal Data, Not Waived PrivilegeIPR2012-00001
- LKQ v. Clearlamp (IPR2013-00020, Paper 17): Evidentiary Objections Must Wait for TrialIPR2013-00020
- Microsoft v. Proxyconn (IPR2012-00026, Paper 32): No Commercial-Success Discovery Without NexusIPR2012-00026
- SAP v. Versata (CBM2012-00001, Paper 24): Protective Order, Discovery and Timing before InstitutionCBM2012-00001
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