{"id":496,"date":"2013-09-12T16:27:56","date_gmt":"2013-09-12T20:27:56","guid":{"rendered":"https:\/\/aia.harnessip.com\/?p=496"},"modified":"2013-09-27T16:30:50","modified_gmt":"2013-09-27T20:30:50","slug":"obtaining-additional-discovery-in-an-inter-partes-review-remains-difficult","status":"publish","type":"post","link":"https:\/\/aia.harnessip.com\/?p=496","title":{"rendered":"Obtaining Additional Discovery in an Inter Partes Review Remains Difficult"},"content":{"rendered":"

The provision for \u201cadditional discovery\u201d in inter partes <\/em>review proceedings has consistently fallen victim to the PTAB\u2019s steadfast resolve to ensure just, speedy, and inexpensive inter partes <\/em>review proceedings.\u00a0 With one notable exception, each request for additional discovery has been denied by the Board, typically with a holding that the movant has failed to meet the requirement that such discovery is \u201cnecessary in the interest of justice.\u201d\u00a0 37 CFR \u00a7 42.51(b)(2). Below, we summarize the most recent decisions relating to Motions for Additional Discovery and the key guidance from the Board that can be learned from each such decision.<\/p>\n

Motions Denied<\/p>\n

Smith & Nephew, Inc. v. Convatec Tech., Inc.<\/em>, IPR2013-00097, Paper 27<\/a> (August 21, 2013).\u00a0 ConvaTec sought discovery into certain submissions made by Smith & Nephew to the FDA that related to a commercial product ConvaTec alleged was covered by its patent-at-issue.\u00a0 Briefly, ConvaTec alleged that, during a UK proceeding, Smith & Nephew made confidential statements that suggested that it had failed to make the product by its own method and was forced to use methods claimed in ConvaTec\u2019s patent.\u00a0 This evidence would, per ConvaTec, be relevant secondary considerations of non-obviousness relating to copying and failure of others.\u00a0 The Board denied the request, finding that ConvaTec failed to provide sufficient explanation and evidence that something useful would be uncovered if discovery were granted.\u00a0 More specifically, the Board found that, even if the FDA had found that Smith & Nephew\u2019s product was \u201csubstantially equivalent,\u201d such a statement would be insufficient evidence of copying.\u00a0 Order at 5.\u00a0 Further, the \u201cfailure of others\u201d argument was not deemed sufficient to allow discovery because, to establish that factor, there must be evidence of widespread efforts of skilled workers, having knowledge of the prior art, that failed to find a solution to the problem.\u00a0 This single incident of failure, if proven, would not demonstrate such widespread efforts and failure.\u00a0 Order at 7.<\/p>\n

Blackberry Corp. v. Wi-Lan USA Inc.<\/em>, IPR2013-00126, Paper 15<\/a> (August 19, 2013).\u00a0 Wi-Lan served a \u201cFirst Request for Production of Documents and Things,\u201d and Blackberry requested a conference call with the Board for guidance on whether it needed to respond to the requests.\u00a0 In short, the Board said Blackberry need not respond to the requests.\u00a0 The requests were based on the Routine Discovery provisions of the Patent Office regulations, but with some broadening caveats.\u00a0 For example, Wi-Lan sought documents \u201crelating to<\/em> information inconsistent with\u2026,\u201d instead of \u201cinformation inconsistent with\u2026\u201d as required by the Rules.\u00a0 Even had the requests identically mirrored the Rules, however, the Board would still have ruled that they need not be responded to.\u00a0 In short, Routine Discovery is self-executing and self-enforcing and, thus, there is no need for the service of discovery requests to get that information.\u00a0 Order at 2.<\/p>\n

St. Jude Medical, Cardiology Division, Inc. v. Board of Regents of the University of Michigan<\/em>, IPR2013-00041, Paper 20<\/a> (July 31, 2013).\u00a0 The University of Michigan sought documents St. Jude exchanged with the FDA in obtaining approval to market products covered by the patent-at-issue.\u00a0 This information was sought for the purpose of seeing if it contained secondary considerations evidence, among other reasons.\u00a0 St. Jude opposed given the magnitude of the burden on St. Jude to review and produce the documents.\u00a0 Because Michigan only identified a \u201cpossibility\u201d of finding useful information, the request for additional discovery was deemed insufficient by the Board.\u00a0 Order at 3. University of Michigan was also deemed not to have acted timely in making the request (it having been made only shortly before the Patent Owner Response was due).<\/p>\n

Illumina, Inc. v. The Trustees of Columbia University in the City of New York<\/em>, IPR2012-00006, Paper 42<\/a> (May 7, 2013).\u00a0\u00a0 Columbia University sought to file a motion for additional discovery to use evidence obtained from Illumina in co-pending litigation.\u00a0 The Board held that permission to use such evidence was unnecessary \u2013 simply, Columbia did not need to take any discovery at all, such discovery had already occurred.\u00a0 The request for authorization to file the motion was denied, therefore, as moot.<\/p>\n

Synopsis, Inc. v. Mentor Graphics Corp.<\/em>, IPR2012-00042, Paper 24<\/a> (April 25, 2013).\u00a0 Mentor Graphics sought discovery relating to the issue of assignor estoppel.\u00a0 Briefly, Mentor Graphics believed that additional discovery may have led to evidence proving that the petitioner was in privity with an assignor of the patent-at-issue.\u00a0 For purposes of this motion, the Board assumed it could hear the issue of assignor estoppel, but ultimately denied the motion, in any event, because Mentor Graphics had not proven that the discovery was necessary in the interest of justice.\u00a0 More specifically, Mentor Graphics: (1) failed to provide an explanation with evidence sufficient to show that something useful will be uncovered by the discovery: (2) failed to provide what efforts it had made to acquire, on its own, the discovery it now seeks; and (3) proffered discovery requests that were burdensome in terms of finances, human resources, and meeting the IPR time schedule.<\/p>\n

Redline Detection, LLC v. Star Envirotech, Inc.<\/em>, IPR2013-00106, Paper 31<\/a> (August 27, 2013).\u00a0 In an analogous case to the Mentor Graphics <\/em>decision discussed above, Star Envirotech\u2019s Motion for Additional Discovery, seeking information that would prove the applicability of an assignor estoppel defense, was denied because this three judge panel decided that assignor estoppel cannot be successfully raised as a defense in an inter partes <\/em>review.\u00a0 Thus, because assignor estoppel was not deemed to be a valid defense in inter partes review proceedings, Star Envirotech could not meet its burden to show that the requested discovery was necessary in the interest of justice.<\/p>\n

The Exception<\/p>\n

Corning Inc. v. DSM IP Assets B.V.<\/em>, IPR 2013-00043, Paper 27<\/a> (June 21, 2013).\u00a0 Proving that it was not simply hitting the \u201cNO Button\u201d with regard to each Motion for Additional Discovery, the Board partially granted DSM\u2019s request for Additional Discovery, allowing DSM discovery into laboratory notebooks and related documents that contained protocols and testing that underlie test results submitted by Corning\u2019s expert.\u00a0 In this IPR proceeding, Corning took the position that the subject matter in the challenged claims was unpatentable over the prior art based on inherent properties not explicitly recited in the prior art.\u00a0 As such, Corning\u2019s experts recreated the prior art compositions and tested them to prove that the properties from the DSM patent claims were inherent in those compositions.\u00a0 DSM obtained the Board\u2019s permission to discover the lab notebooks of Corning\u2019s experts, but not actual samples of the compositions prepared by Corning, nor any testing results that were inconsistent with Corning\u2019s testing (the latter discovery being deemed required already by \u201cRoutine Discovery\u201d).<\/p>\n","protected":false},"excerpt":{"rendered":"

The provision for \u201cadditional discovery\u201d in inter partes review proceedings has consistently fallen victim to the PTAB\u2019s steadfast resolve to ensure just, speedy, and inexpensive inter partes review proceedings.\u00a0 With one notable exception, each request for additional discovery has been … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":12,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"jetpack_post_was_ever_published":false,"_jetpack_newsletter_access":"","_jetpack_dont_email_post_to_subs":false,"_jetpack_newsletter_tier_id":0,"_jetpack_memberships_contains_paywalled_content":false,"_jetpack_memberships_contains_paid_content":false,"footnotes":"","jetpack_publicize_message":"","jetpack_publicize_feature_enabled":true,"jetpack_social_post_already_shared":false,"jetpack_social_options":{"image_generator_settings":{"template":"highway","default_image_id":0,"font":"","enabled":false},"version":2}},"categories":[4],"tags":[15,16,17],"class_list":["post-496","post","type-post","status-publish","format-standard","hentry","category-ipr","tag-discovery","tag-inter-partes-review","tag-secondary-considerations"],"jetpack_publicize_connections":[],"jetpack_featured_media_url":"","jetpack_sharing_enabled":true,"jetpack_shortlink":"https:\/\/wp.me\/p4ZIpB-80","_links":{"self":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/496","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/12"}],"replies":[{"embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=496"}],"version-history":[{"count":1,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/496\/revisions"}],"predecessor-version":[{"id":497,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/496\/revisions\/497"}],"wp:attachment":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=496"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=496"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=496"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}