Motion for Additional Discovery Based on Unraised Arguments Denied, PTAB Litigation Blog

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The Patent Trial and Appeal Board (“PTAB”) recently denied a Petitioner’s Motion for Additional Discovery.  Scientific Design Co., Inc. v. Shell Oil Co., IPR2021-01537, Paper 18 (PTAB Aug. 12, 2022). In an inter partes review (“IPR”), a party seeking additional discovery beyond what is expressly permitted by rule must do so by motion and must show that additional discovery is “necessary in the interest of justice.”  35 U.S.C. § 316 (a)(5); see 37 C.F.R. § 42.51 (b)(2)(i).  The PTAB will consider the five Garmin factors in determining whether additional discovery is necessary in the interest of justice.  Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 6–7 (PTAB Mar. 5, 2013).  The Blog has previously discussed these factors in more detail, including Garmin factor 1, which focuses on whether the movant can show that additional discovery will be useful, meaning favorable in substantive value and not merely admissible or relevant.

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