Discovery in Post-Grant Review vs. Inter Partes Review

Discovery is one of the biggest differences between a PTAB trial and patent litigation. There are no broad document requests, no interrogatories as of right and no sweeping depositions of company employees. Instead, the America Invents Act and the Board’s rules allow a short list of routine discovery and require a showing for anything else.

The standards are not identical for inter partes review (IPR) and post-grant review (PGR). This article compares them.

What the statutes say

• IPR, 35 U.S.C. § 316(a)(5). The Director’s regulations set discovery standards, limited to (A) the deposition of witnesses submitting affidavits or declarations and (B) what is otherwise necessary in the interest of justice.
• PGR, 35 U.S.C. § 326(a)(5). Discovery is to be limited to evidence directly related to factual assertions advanced by either party in the proceeding.

The difference reflects the broader grounds available in PGR. A PGR may raise issues such as written description, enablement or patent eligibility, which can turn on facts that are not found in a prior-art document.

Routine discovery in both proceedings

Under 37 C.F.R. § 42.51(b)(1), routine discovery applies in every AIA trial and needs no motion. It covers:

• Exhibits cited. Any exhibit cited in a paper or in testimony must be served with the citing paper or testimony, unless previously served.
• Cross-examination of declarants. A party may cross-examine the other side’s affidavit or declaration witnesses, ordinarily by deposition. See taking a deposition in an IPR or PGR.
• Inconsistent information. A party must serve relevant information that is inconsistent with a position it advances, at the time it files the paper or testimony that takes the position. Privileged material is excluded.

Parties may also agree to additional discovery between themselves, under § 42.51(b)(2).

Additional discovery: interests of justice (IPR)

In an IPR, a party seeking additional discovery without agreement must file a motion showing that the discovery is in the interests of justice (§ 42.51(b)(2)). The Board applies the factors from Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001 (Paper 26). See the site’s discussion of Garmin v. Cuozzo and limited discovery.

1. More than a possibility. The requester should already have evidence tending to show that something useful will be found, not just a mere possibility or allegation.
2. Litigation positions. Requests for the other party’s litigation positions and their underlying basis are generally not appropriate.
3. Equivalent information by other means. The Board considers whether the requester can generate equivalent information without discovery.
4. Easily understandable instructions. Instructions and questions should be clear.
5. Not overly burdensome. Requests should not be unduly burdensome in cost, time or effort, given the compressed schedule.

The first factor is often decisive. Requests that amount to a search for something helpful are usually denied.

Additional discovery: good cause (PGR)

In a PGR, and formerly in covered business method reviews, 37 C.F.R. § 42.224 applies instead. A request for additional discovery must be limited to evidence directly related to factual assertions advanced by either party, and the requesting party must show good cause.

The good cause standard is generally described as somewhat more permissive than interests of justice, consistent with the broader issues in PGR. The Board still considers relevance, specificity and burden, and requests remain narrow.

Comparison table

	IPR	PGR
Statute	§ 316(a)(5)	§ 326(a)(5)
Routine discovery	§ 42.51(b)(1)	§ 42.51(b)(1)
Additional discovery rule	§ 42.51(b)(2)	§ 42.224
Standard	Interests of justice	Good cause
Scope limit	Depositions of declarants and what is necessary in the interest of justice	Evidence directly related to factual assertions advanced by either party
Typical issues	Prior-art documents, public accessibility, secondary considerations	Same, plus facts relevant to §§ 101 and 112

Practical considerations

• Schedule. Discovery has to fit within the statutory one-year trial period. See discovery and the one-year time period.
• Board authorization. Motions in AIA trials generally require prior authorization, usually obtained in a conference call with the panel.
• Protective orders. Confidential material produced in discovery is typically handled under a protective order and motions to seal.
• Common subjects. Additional discovery requests often concern real party in interest, secondary considerations such as commercial success, or the facts behind an expert’s testing.

Key takeaways

• Discovery in IPR and PGR is limited; routine discovery under § 42.51(b)(1) covers cited exhibits, cross-examination of declarants and inconsistent information.
• In IPR, additional discovery requires a showing that it is in the interests of justice, judged by the Garmin factors.
• In PGR, § 42.224 requires good cause and limits requests to evidence directly related to factual assertions advanced by either party.
• Both standards remain far narrower than district court discovery.