By Ashvi Patel, Marlee Hartenstein, and Matt Johnson

On November 18, 2022, a panel of three PTAB administrative patent judges denied a Patent Owner’s Request for Additional Discovery in Twitter, Inc. v. Palo Alto Research Center Inc., IPR2021-01398.  The PTAB found that additional discovery would not be in the interest of justice in this particular case.

Petitioner Twitter, Inc. initiated an inter partes review (IPR) proceeding to challenge the validity of U.S. Patent No. 7,043,475 (“the ’475 Patent”) owned by Palo Alto Research Center Inc. The ’475 Patent relates to techniques for clustering user sessions using multi-modal information, including proximal cue information.

Patent Owner sought discovery of an unfiled draft reply declaration referenced by Petitioner’s declarant, Dr. Turnbull during his deposition.  During a remote deposition, Dr. Turnbull relied on a sentence of a draft declaration that he erroneously had open.  On realizing the error, Dr. Turnbull shifting to the filed declaration for the rest of his deposition.  Patent Owner alleged that the draft declaration was inconsistent with the filed declaration such that 37 C.F.R. § 42.51(b)(1)(iii) applies.  According to Patent Owner, 37 C.F.R § 42.51(b)(2) also weighed in favor of production, which states a party may seek additional discovery when “such additional discovery is in the interest of justice.”

37 C.F.R. § 42.51(b)(1)(iii) provides that “a party must serve relevant information that is inconsistent with a position advanced by the party during the proceedings,” but “this requirement does not make discoverable anything otherwise protected by legally recognized privileges such as attorney-client or attorney work product.”  The PTAB found that the request included production of expert “opinion” evidence rather than just “facts or data”.  This information would be protected under attorney work product, which was not waived by the Petitioner.  Moreover, the Patent Owner had an opportunity to question Dr Turnbull during cross examination.  Therefore, the Patent Owner was not entitled to access of the entire draft declaration under this rule; instead, the PTAB ruled that only discovery of paragraph five of the draft reply was permissible.

Regarding additional discovery under § 42.51(b)(2), the PTAB disagreed, finding that Patent Owner had not shown the additional discovery was in the interests of justice.  Historically, the PTAB has been conservative in authorizing additional discovery in IPR proceedings, applying the Garmin factors when deciding the “interests of justice” standard.  Garmin Int’l, Inc. v. Cuozzo Speed Tech. L.L.C., IPR2012-00001, Paper 26 (P.T.A.B. Mar. 5, 2013).  These factors are: (1) the request is more than a possibility or mere allegation with regard to the likelihood of useful discovery; (2) the request does not merely seek the opposing party’s litigation positions and corresponding basis underlying those positions; (3) there is no ability to obtain or generate equivalent information by alternative means; (4) the instructions are easily understandable; and (5) the request is not overly burdensome to answer.

In this case, the PTAB focused its discussion on factors 1 and 3. In order to show Garmin factor 1 weighs in favor of a requester of discovery, they must “already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered.”  Here, Patent Owner pointed to one paragraph within the unfiled draft declaration where the declarant used a term that was inconsistent with the as-filed declaration.  Patent Owner theorized that the inconsistency showed numerous shifts in position by Petitioner, but the PTAB found this to be mere speculation.  The PTAB explained Patent Owner’s request for additional discovery was nothing more than an effort “to search through the draft reply declaration to attempt to find something useful that Patent Owner could have sought during the cross-examination of Dr. Turnbull.”  Therefore, there was no more than a mere possibility based on speculation that the draft declaration would help with Patent Owner’s claim construction arguments.

Garmin factor 3 refers to “information a party can reasonably figure out or assemble without a discovery request, which would not be in the interest of justice to have produced by the other party.”  Here, Patent Owner claimed it could not obtain the unfiled reply declaration from any other source, as there was nothing equivalent to the draft in the record.  The PTAB was unpersuaded, finding that Patent Owner should have been able to support its claim construction positions with intrinsic evidence, i.e., the claim language itself, the written description, and the prosecution history, which was readily available. Further, the PTAB noted that Patent Owner had ample opportunity to ask about the unfiled declaration during cross examination, but did not do so.

Factor 2 also weighed against Patent Owner, as nearly all of the unfiled declaration fell under the attorney work product privilege.  However, Patent Owner showed that Garmin factors 4 and 5 favored discovery.  After weighing each factor, the PTAB found that it was not in the interest of justice to allow for production of the unfiled reply declaration.

Takeaway: A moving party’s request for additional discovery may be denied if they had an opportunity to question a witness regarding the information they seek to discover, but did not do so.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.