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Discovery Request Seeking Deposition Preparation Materials Denied, PTAB Litigation Blog

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The Patent Trial and Appeal Board (“PTAB”) recently denied a Motion for Additional Discovery because the movant could not prove beyond mere speculation that the requested documents would be useful to show witness scripting.

As a general matter, discovery in an inter partes review (“IPR”) proceeding is less than what is normally available in district court patent litigation. See Garmin Intl’, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 (March 5, 2013).  The PTAB Trial Practice Guide and 37 C.F.R 42.51 provide for three types of discovery: mandatory initial disclosures, routine discovery, and additional discovery.  Parties can agree to additional discovery, but absent agreement, a party may file a motion for additional discovery.  37 C.F.R. 42.51(b)(2). The PTAB may order additional discovery if the moving party shows “that such additional discovery is in the interests of justice.” 37 C.F.R. § 42.51(b)(2)(i).  In determining whether such discovery is in the interest of justice, the PTAB takes into consideration the five Garmin factors, which we have discussed on the PTAB Litigation Blog, here.

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