Discovery In Post-Grant Review vs. Inter Partes Review
Lynde F. Herzbach for Law360, New York (May 2, 2016, 12:24 PM ET) —
There are many factors that affect which type of post-grant proceeding to file, including timing for filing, estoppel, possible arguments for unpatentability, and available evidence. This article will focus on discovery in post-grant review versus inter partes review and evaluate whether or not additional discovery issues should be a factor in the decision of which proceeding to file. Currently, 10 post-grant reviews have been instituted and the number of patents eligible for post-grant review is growing as more and more America Invents Act patents are issued. For those patents that are eligible for post-grant review, would-be petitioners should evaluate whether a PGR or an IPR is the best option for arguing claims are unpatentable. Based on the limited data available, it appears that even though the number of possible issues in a PGR are broader and the standard for additional discovery is slightly more lenient, it is difficult to obtain additional discovery in a PGR. The ability to seek additional discovery in a PGR is much closer to that of an IPR as opposed to a district court proceeding.
Standards in PGR vs. IPR
Most practitioners are aware that PGR and IPR are different proceedings and that different arguments and evidence may be raised in one versus the other. For example, in an IPR, a petitioner is limited to presenting grounds based on 35 U.S.C. §§ 102 and 103, but a petitioner in a PGR can allege unpatentability on almost any ground affecting the validity of the patent, such as 35 U.S.C. §§ 101, 102, 103, 112. However, the differences also include different standards for institution of the respective proceedings and different standards for additional discovery. The standard for additional discovery in a PGR, including covered business method patent reviews, is “good cause,” while additional discovery in an IPR is allowed under an “interests of justice” standard. It is interesting to note that the statute specifically limits additional discovery in IPRs to “what is otherwise necessary in the interest of justice.” Nevertheless, the statute for PGRs requires only that additional discovery “be limited to evidence directly related to factual assertions advanced by either party in the proceeding,” and the “good cause” standard is not specifically defined until the rules.
The Patent Trial and Appeal Board has interpreted the interests of justice standard to be slightly higher than the good cause standard. The reason given for the difference in standards is the scope of issues that can be raised in IPR petitions is limited to grounds based on patents or printed publications under 35 U.S.C. §§ 102 or 103 versus the almost limitless grounds that can be raised in a PGR petition.
PTAB Handling of Motions for Additional Discovery
When deciding a motion for additional discovery, the PTAB evaluates the five Garmin factors. These factors are used in all types of post-grant proceedings, including IPRs and PGRs/CBMs, even though the additional discovery standards are different. PTAB panels deciding motions for additional discovery in PGRs/CBMs have analyzed the Garmin factors under the “good cause” standard, but the decisions have come out very close to what would have been expected in an IPR proceeding. For example, the Bloomberg decision analyzed the Garmin factors in a CBM with only slight modification. If there is a difference in the additional discovery standard between the different proceedings, it appears the difference is small.
An analysis of two PGR decisions on motions for additional discovery is informative of how the PTAB is handling additional discovery issues in PGRs. In Global Tel*Link, the same order applied to 10 cases: one CBM, seven IPRs, and two PGRs. The patent owner filed a motion for discovery, after authorization from the PTAB, seeking documents relevant to real parties-in-interest. The PTAB used the Garmin/Bloomberg factors to see if the additional discovery requested was necessary “in the interests of justice” or if there was “good cause” for additional discovery. In the end, the motion was denied because the patent owner failed to prove that the two contested factors would have weighed in favor of granting the motion: (1) whether something useful would be found, and (2) whether the requests were overly burdensome. However, the PTAB did not perform a separate analysis of the factors under the different IPR and PGR/CBM standards. The final decision rested on the same analysis and a simple, stated conclusion that neither standard was met.
The patent owner’s motion for additional discovery was granted-in-part in American Simmental allowing the patent owner to serve some of the proposed discovery requests. The patent owner sought additional discovery related to possible real parties-in-interest; secondary considerations of nonobviousness, including long-felt but unresolved need, failure of others, acclaim, and copying; and potential bias of the petitioner’s proposed expert witness.
The PTAB noted the patent owner’s burden to establish good cause and analyzed the discovery requests using the Garmin factors, specifically factors 1 (more than a possibility and mere allegation), 3 (ability to generate equivalent information by other means), and 5 (requests not overly burdensome to answer). The PTAB allowed additional discovery related to the possible real parties-in-interest, copying, and potential bias, but limited the patent owner to only the discovery requests that were not overly broad or ambiguous.
A major factor that contributed to the decision was the patent owner’s ability to show more than a mere possibility that something useful would be found. The patent owner relied on specific factual allegations supported by exhibits that included numerous documents published by the petitioner, articles and press releases, declarations by the inventors regarding interactions with the petitioner, and preliminary infringement contentions from the related litigation. Of the discovery requests filed with the motion, the PTAB allowed those that included only the most narrow, non-burdensome discovery requests. Broad, far-reaching discovery requests covering general ideas or arguments without evidentiary support of their existence were not allowed by the PTAB.
These two PGR decisions follow the same reasoning as the Bloomberg CBM decision that is one of the U.S. Patent and Trademark Office’s representative orders on additional discovery. In Bloomberg, the PTAB specifically noted that good cause for Factor 1 requires a moving party to “provide a specific factual reason for expecting reasonably that the additional discovery will be ‘useful.’” The PTAB allowed a discovery request for the production of documents considered by Bloomberg’s expert, but denied additional discovery seeking the production of all prior art known to Bloomberg and documents related to licensing and commercial implementation. So, if a party to a PGR can demonstrate through facts and evidence that there is more than a mere possibility that something useful to the proceeding will be found, the discovery cannot be obtained any other way, and the discovery requests are specific and reasonable, then it may be possible to obtain limited additional discovery. This limited possibility for additional discovery in a PGR is nearly identical to the possibility for additional discovery in an IPR.
Don’t Count on Any Additional Discovery When Choosing a Post-Grant Proceeding
The different standard for additional discovery in a PGR as opposed to an IPR should not be a major factor in deciding which proceeding to file. The opportunities for additional discovery are very limited in PGR, just like IPR. Indeed, the rationale for limiting discovery is the same for both proceedings, that is, the proceedings should be an efficient, streamlined, and cost-effective alternative to district court litigation that must be completed within the statutory time period.
Keeping in mind that it may not be possible to obtain needed additional discovery to support the additional grounds that can be raised in a PGR as opposed to an IPR, it may be best to file an IPR to avoid estoppel for the other grounds. Since the current PGR estoppel provision covers all grounds of unpatentability that were raised or reasonably could have been raised, petitioners who later finds themselves defendants may be estopped from raising nearly all invalidity defenses after a final PTAB decision in a PGR. This is particularly detrimental where a PGR petitioner fails to carry its burden of proving claims are unpatentable at the PTAB due to a lack of additional discovery but is then estopped from fully developing patentability defenses in district court where discovery is much more readily attainable. Practitioners should realize that the different standard for additional discovery in a PGR does not necessarily enable parties to obtain additional discovery in a PGR versus an IPR, and therefore, undeveloped defenses may be best saved for district court.
 35 U.S.C. § 326(a)(5); 35 U.S.C. § 316(a)(5); 37 C.F.R. §§ 42.51(b)(2)(i), 42.224.
 35 U.S.C. § 326(a)(5).
 Compare 35 U.S.C. § 316(a)(5) versus 37 C.F.R. § 42.224.
 Bloomberg Inc. et al. v. Markets-Alert Pty Ltd., CBM2013-00005, Paper No. 32 (May 29, 2013).
 Id.; 35 U.S.C. §311(b).
 Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC, IPR2012-00001, Paper No. 26 at 6-7 (Mar. 5, 2013).
 Global Tel*Link Corporation v. Securus Techs, Inc., PGR2015-00013, -00014, Paper No. 17 (Sept. 22, 2015); American Simmental Assoc. v. Leachman Cattle of Colorado, LCC, PGR2015-00003, -00005, Paper No. 32 (Sept. 4, 2015).
 Bloomberg, CBM2013-00005, Paper No. 32 (May 29, 2013).
 See 35 U.S.C. §325.