Additional Discovery: Must Be More Than Mere Possibility, <i>PTAB Litigation Blog</i>

Additional Discovery: Must Be More Than Mere Possibility, PTAB Litigation Blog

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The PTAB recently denied a motion for additional discovery that sought the production of documents argued to be relevant to inventorship. In Watson Laboratories, Inc. v. United Therapeutics, Corp., Case IPR2017-01621 and -01622 (PTAB April 27, 2018) (Paper 37), the Petitioner moved for additional discovery relating to “the contribution of the named inventors to the challenged claims.” Id. at 2. The Petitioner sought the production of a declaration that had been submitted to the USPTO during the prosecution of a parent to the challenged patents. The declaration, which had been submitted under 37 C.F.R. § 1.47(a) to request inventor oaths without signatures, attached various exhibits, including email correspondence, some of which had been redacted. Petitioner sought an unredacted copy to support its argument that a prior art reference was the work of “another” under 35 U.S.C. § 102(a).

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