Limited Experiment Protocol Discovery Granted, PTAB Litigation Blog
In an inter partes review (IPR), the scope of discovery is expressly stated in the C.F.R. and additional discovery must either be agreed upon by the parties or granted by the Board when it “is necessary in the interest of justice.” C.F.R. § 42.51(b). The movant bears the burden of demonstrating additional discovery is needed. When addressing this issue, the Patent Trial and Appeal Board (PTAB) considers the five Garmin factors: (1) whether there exists more than a possibility and mere allegation that something useful will be discovered; (2) whether the requests seek the other party’s litigation positions and the underlying basis for those positions; (3) whether the moving party has the ability to generate equivalent information by other means; (4) whether the moving party has provided easily understandable instructions; and (5) whether the requests are overly burdensome. Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 6–7 (PTAB Mar. 5, 2013).
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