PTAB And Discovery: An Insider’s Perspective

Recently, APJs Bonilla and Snedden authored a post on the USPTO AIA Blog entitled "Routine and Additional Discovery in AIA Trial Proceedings: What is the Difference?" Their post provides some meaningful insight into how the PTAB approaches routine and additional discovery and cites numerous decisions that may be useful to practitioners.

The APJs explain that "routine discovery" under Rule 42.51(b)(1)(i) has its limitations. While exhibits cited in a paper or testimony must be produced, no requirement exists for a party to create or provide materials that were not cited. Nor are parties required to produce materials that a party or witness considered in preparing the paper or the testimony.