PTAB Grants Rare Request For Additional Discovery In IPR

In Mylan v. Allergan (IPR2016-00127, Paper No. 73), the PTAB granted a rare request for discovery filed be Petitioner in response to summaries of data presented in a Patent Owner Response used to rebut obviousness. In particular, the PTAB found that the Garmin factors for analyzing discovery requests weighed in favor of granting Petitioner's motion. However, the decision only granted the requested discovery in part, and the PTAB's reasoning as to what it granted and what it denied may be instructive in other situations.

The Patent Owner had submitted certain figures that visually depicted pharmacokinetic data designed to show the benefits of the invention so as to rebut obviousness. Certain of the figures submitted by Patent Owner lacked mean value and standard error rates, and so the Petitioner requested discovery of the underlying pharmacokinetic data so that it could properly evaluate the significance of the figures.