Inter Partes Review and Limited Discovery: Garmin v. Cuozzo
By Eugene T. Perez and Gerald M. Murphy, Jr.
An inter partes review (“IPR”) has limited discovery, which is basically limited to witnesses submitting affidavits or declarations that may be deposed, and cross-examination of a witness if an exhibit is cited. In contrast, a district court can have full discovery options, including expert witnesses taking the stand. Thus, a district court may allow more explanation for purposes of claim construction. At the same time, a district court may lead to more discovery related to allegedly infringing product, non-prior art issues, inequitable conduct, etc.
At first blush, the USPTO rules appear to allow more than just depositions and cross-examination. Specifically, the following 3 types of discovery are allowed:
- “Limited discovery” which is among parties themselves at any time (§42.51(a)) and do not need PTAB authorization;
- “Routine discovery” (§ 41.51(b)) consists of information that is inconsistent with a position that a party has taken, including (i) serving copies of any exhibits cited in a paper or testimony; (ii) cross-examination of persons that have submitted affidavits/declarations; and (3) service of noncumulative information inconsistent with a position advanced by the party during the proceeding, concurrent with the filing of documents containing the inconsistency; and
- “Additional Discovery”, which are “production of “documents and things” (basically limited to providing copies of documents or access to “things” that are being relied on by a party (§ 42.51(c)(2))); and any other discovery.
All other discovery (which would be considered as “additional discovery”) requires a motion and satisfying the “interests of justice” standard (§ 42.51(c)(1)), which is a very high standard. For instance, a patent owner may be granted additional discovery to challenge if the petitioner even has standing (i.e., the petitioner may have been a real party in interest or privy in a prior proceeding, and thus estopped from filing the IPR; thus, some discovery is needed to ascertain if the petitioner has standing). But other than the lack of standing example, satisfying the “interests of justice” standard will be tough.
As just one example, the “interests in justice” standard was not found in Garmin v. Cuozzo, Case IPR2012-00001, Paper No. 26, page 5 (PTAB March 5, 2013). In this IPR proceeding, Cuozzo (patent owner) described its request for information from Garmin as “routine discovery” (but was an “additional discovery” request). However, many of the interrogatories were vague requesting many details. For instance, interrogatory No. 2 stated: “Identify and describe, in detail, each patent application, invention disclosure or product description generated by or on behalf of any Garmin entity that describes [the product] …”.
The PTAB explained that the limited discovery available in IPRs is “significantly different from the scope of discovery generally available under the Federal Rules of Civil Procedure” and “restricts additional discovery to particular limited situations, such as minor discovery that PTO finds to be routinely useful, or to discovery that is justified by the special circumstances of the case.” Further, the PTAB provided five factors to consider in deciding whether additional discovery is in the interests of justice:
1. “More Than A Possibility And Mere Allegation”: “the requester of the information should already be in possession of a threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be uncovered.” No “fishing expeditions” will be allowed under the guise of additional discovery. However, this is a “catch-22” in that if you already have the information then you do not need the discovery; if you do not have the information then you cannot meet the threshold showing for requesting discovery.
2. “Litigation Positions and Underlying Basis”: This factor cannot be used to force a party to divulge its theories of its case and evidence it intends to present, in contrast to some procedures available in district court litigation. The PTAB noted that “If and when Garmin presents affidavits or declaration testimony to support any position it maintains, Cuozzo has an opportunity to cross-examine the affiant…” (page 13 of Paper No. 26). This opportunity is exactly the same procedure used in interferences for many years.
3. “Ability to Generate Equivalent Information by Other Means”: In considering this factor, the PTAB basically said: “You cannot force the other side to help you prove your case. You need to prove it yourself.” More specifically, the Board stated: “Cuozzo has not adequately explained why it needs Garmin’s views … Cuozzo can rely on its own analysis of the state of the art or on the opinions of independent analysts.” (page 14).
4. “Easily Understandable Instructions”: This factor relates primarily to interrogatories; the instructions for which can often be very confusing.
5. “Requests Not Overly Burdensome To Answer”: In explaining part of the rationale for this requirement, the PTAB noted the one-year statutory deadline for IPR. Any requests need to be “sensible and responsibly tailored according to a genuine need” (page 14). Garmin estimated that responding to the requests could cost $52,500 to $82,500 (page 15). This was simply too burdensome and therefore Cuozzo failed to meet this requirement.
Thus, it is clear that the “interests of justice” standard is a fairly high standard, and will be rarely satisfied such that any additional discovery in an IPR should not be expected.