High bar for additional discovery in IPRs

Managing Intellectual Property
May 2014

Because inter partes review (IPR) proceedings are meant to move quickly and to be completed within one year, discovery is strictly limited. Though a party may move for “additional discovery” under the IPR rules, such motions are rarely granted. One consequence of the PTAB’s strict discovery rules is that patent owners seeking to argue objective indicia of nonobviousness may need to rely on objective indicia that can be proven using publicly available information. This is in stark contrast to district court litigation, where full discovery of the patent challenger’s corporate documents is allowed. In a May 2014 article in Managing Intellectual Property, Jason Okun and Brendan O’Malley discuss the tension between limited discovery in IPRs and the Federal Circuit’s recent holdings requiring full examination of objective indicia before rendering any decision on obviousness.

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