Discovery and the One-Year Time Period in AIA Proceedings

Congress designed AIA trials to be fast. Under 35 U.S.C. § 316(a)(11), the final determination in an inter partes review (IPR) must issue not later than one year after institution, although the Director may extend that period by up to six months for good cause. Post-grant review (PGR) has the same rule in § 326(a)(11). Extensions are uncommon, so parties plan around the one-year date.

That deadline is the main reason discovery at the Patent Trial and Appeal Board is so limited. Everything, including depositions, briefing and the oral hearing, has to fit inside it.

The statute drives the schedule

The one-year period begins at institution, not at filing. By the time trial starts, the petitioner has already filed its evidence with the petition, and the patent owner may have filed a preliminary response. The Board then has roughly twelve months to take the patent owner’s response and any motion to amend, the petitioner’s reply, the patent owner’s sur-reply, motions on evidence, and an oral hearing, and to write its decision.

Because the Board needs time to deliberate and write, the parties’ work is concentrated in the first nine months or so of trial.

The scheduling order

When the Board institutes trial, it issues a scheduling order with a series of numbered due dates. Typically these cover:

• The patent owner response and any motion to amend.
• The petitioner reply and any opposition to a motion to amend.
• The patent owner sur-reply and further motion-to-amend briefing.
• Motions to exclude evidence, oppositions and replies.
• Requests for oral argument and the oral hearing itself.

Cross-examination depositions of each side’s declarants must be completed within the windows between those papers. In general, a deposition of the petitioner’s declarant happens before the patent owner response is due, and a deposition of the patent owner’s declarant happens before the petitioner reply.

What the parties can change

The Trial Practice Guide allows parties to stipulate to move some of the earlier, intermediate due dates without asking the Board, provided they give notice and do not push past the later dates. The final dates, such as the oral hearing, generally cannot be moved by agreement. The specific rules for stipulations appear in the scheduling order and current guidance, so check them for each case.

How the deadline limits discovery

Limited motions

Most motions in an AIA trial require prior Board authorization, usually requested by email and decided on a conference call. A motion for additional discovery must be justified under the applicable standard, and the Board weighs whether the discovery can be completed without disrupting the schedule. The burden factor in Garmin International v. Cuozzo Speed Technologies expressly asks about cost and time. See discovery in PGR vs IPR.

Little room for disputes

Discovery disputes that might take months in court have to be resolved in days. The Board often addresses them on a call and may issue a short order. A party that waits to raise a dispute risks running out of time to act on the answer.

Tight deposition windows

Each declarant is usually deposed once per round of testimony, within fixed time limits. Scheduling experts, especially foreign or busy witnesses, can be difficult inside a short window. See taking a deposition in an IPR or PGR.

Practical planning considerations

Parties commonly think about the following early, often before institution:

• Identify witnesses early. Experts and fact declarants should be available for deposition in the expected windows.
• Anticipate the record. Because a reply may only respond to arguments in the opposing paper, the core evidence usually needs to be in the petition or the patent owner response.
• Coordinate with litigation. Many IPRs run alongside district court or ITC cases. Discovery obtained in litigation may be subject to a protective order that limits its use at the PTAB, and positions taken in one forum can be used in the other.
• Protective orders. If confidential information may be exchanged, for example on secondary considerations, parties often agree to a protective order early. The Board’s default protective order is a common starting point.
• Translations and foreign evidence. Foreign-language documents need translations with an affidavit of accuracy, and foreign witnesses may require interpreters and travel.
• Additional discovery requests. A request is more likely to be manageable if it is narrow and made early enough to be completed.

These are considerations, not recommendations for a particular case.

Extensions and joinder

The Director may extend the one-year period by up to six months for good cause, and the statute also allows adjustment in cases of joinder. Parties generally should not count on an extension when planning discovery.

Key takeaways

• The final written decision is generally due within one year of institution, extendable by up to six months for good cause (§§ 316(a)(11), 326(a)(11)).
• The scheduling order sets numbered due dates; parties can move some intermediate dates by stipulation but not the final ones.
• The compressed schedule is a central reason discovery is limited and disputes are resolved quickly.
• Early planning of witnesses, protective orders and coordination with parallel litigation is common.