In Your Dreams – Additional PTAB Discovery Remains Elusive

Discovery in an IPR proceeding is limited compared to district court litigation in order to focus the proceedings and promote speed and efficiency. The PTAB 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).

A party seeking additional discovery in an IPR must show that the additional discovery is "necessary in the interest of justice." Id. The factors the PTAB considers in deciding a request for additional discovery are set forth in Garmin Int'l Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26, 6-7 (PTAB Mar. 5, 2013). We discussed the Garmin factors on the PTAB Litigation blog here.