Page 5 - Litigation

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Litigation | Monday, deceMber 9, 2013 | S5

and reply thereto; and motions to exclude evi- litigants typically conduct discovery of each parties to disclose any non-privileged, rel- value to a contention of the party moving

dence and oppositions and replies thereto.14 other simultaneously and in advance of sub- evant information that is inconsistent with for discovery. 33 As Garmin notes, the “use-
one month later, the ApJ assigned to the Ipr stantive arguments to the court, parties to a position advanced by a party during the fulness” standard is higher than the basic
will hold an initial conference call with the an Ipr are expected to conduct discovery on proceedings.28 This duty goes beyond dis- relevance standard applicable to discovery
parties to discuss any motions they intend to a sequential basis, according to the sched- covery obligations imposed by the frCp in litigation.34 In view of the high “useful-
file and any changes to the scheduling order ule of written submission to the Board.24 for example, a patent owner who relies on ness” standard and the other Garmin fac-
deadlines.15 As in litigation, some of these for example, after the Ipr is instituted, the unexpected results to rebut an allegation tors, motions for additional discovery are
deadlines can be changed by stipulation.16 patent owner should depose the declarants of obviousness is expected to provide the often denied.
Unlike in litigation, the entire Ipr proceeding who supported the petition; after the patent petitioner, unprompted, with any nonpriv- Despite the considerable limitations on
must be completed within a year after the owner has filed its response to the petition, ileged evidence that is inconsistent with Ipr discovery, there exist two significant

date the Ipr is initiated.17 parties to an Ipr the petitioner should depose the declarants those results.29
exceptions. first, a petitioner may request
thus must either cooperate or communicate who supported the response; and after the “Additional discovery” must either be the Board’s authorization to file a motion
with the ApJ by conference call to resolve petitioner has filed its reply to the response, agreed upon by the parties or granted upon to submit “supplemental information” not
disputes in an expeditious manner.
the patent owner should depose the declar- a motion showing that such discovery is in included in the petition.35 If the request
Ipr motions generally will not be entered ants who supported the reply.
“the interests of justice.”30 The following is made within a month after the Ipr is
without prior authorization of the Board,18 Ipr discovery is limited not only in terms factors discussed by the Board in Garmin instituted, the petitioner need only dem-
which must be secured during the initial of time but also scope. There are three Int’l v. Cuozzo Speed Tech.31 typically are onstrate that the supplemental information
or subsequent conference calls with the basic forms of Ipr discovery: “mandatory considered in determining whether the is relevant to a claim for which the Ipr has
ApJ.initial disclosures,” “routine discovery,” and “interests of justice” are met: (i) there must been instituted; it need not further show
19 (some exceptions include motions to
seal, requests for rehearing and motions to “additional discovery.”25 Importantly, none be more than a possibility and mere allega- that such supplemental information is “in
exclude evidence.20) A party cannot appeal of these is subject to the federal rules of tion that useful information will be found; the interests of justice.”36 second, a party
the Board’s decision on a motion, though it Civil procedure (frCp).
(ii) the additional discovery cannot simply may request the Board’s authorization to
may request rehearing within 14 days of the “mandatory initial disclosures” in fact seek the opposing party’s positions and file “observations on cross-examination.”37
decision.21 such a request, however, does not are not mandatory: They may be either the bases therefor; (iii) information that a such observations permit a party that con-
toll the deadline for any action that must be agreed upon by the parties, or granted upon party can reasonably figure out or assemble ducts a deposition after the submission of
taken under the decision.22 In view of these a motion if the parties do not agree.26 These without a discovery request would not be its last substantive paper to call to the
considerations, parties to an Ipr should not initial disclosures identify potential witness- in the interests of justice; (iv) instructions Board’s attention any relevant testimony

expect to rely routinely on motions to seek es and sources of relevant information with- for additional discovery should be eas- from that deposition.
relief from Ipr rules and Board decisions.23
in a party’s possession, custody or control.
ily understandable; and (v) requests for
“routine discovery” includes exhibits additional discovery should not be overly depositions
discovery
cited in a paper or testimony and cross- burdensome.32 Board decisions often focus
examination of the opposing party’s declar- on the first factor, which requires a show- As direct testimony in an Ipr typically
Discovery in Ipr is far from the open- ants.27 litigators should note that “routine ing of “usefulness,” i.e., that the additional is presented by affidavit or declaration,38
ended process it is in litigation. Whereas
discovery” also imposes a duty on the
discovery would be favorable in substantive
Ipr depositions by default are » Page S14

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Principal Economist

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