By Sue Gerber and Matt Johnson

The PTAB has discretion to permit “routine discovery” under 37 C.F.R. §42.51(b)(1)(iii) when that discovery “is narrowly directed to specific information known to the responding party to be inconsistent with a position advanced by that party in the proceeding, and not broadly directed to any subject area in general within which the requesting party hopes to discover such inconsistent information.”  Synaptive Med. Inc. v. Karl Storz Endoscopy-America, Inc., Case IPR2018-00462 (PTAB Oct. 11, 2017) (Paper 14) (quoting Garmin Int’l Inc. v. Cuozzo Speed Techs., LLC, Case IPR 2012-00001 at 4 (PTAB Mar. 5, 2013) (Paper 26)).

In Synaptive, the Patent Owner sought to compel discovery from Petitioner about alleged copying that the Patent Owner argued would show Petitioner was taking an inconsistent position “that it is unaware of any secondary considerations.”  Id. at 2.  The Patent Owner claimed the Petitioner must have evidence of copying because:  Dr. Kassam previously worked for the Patent Owner and then went to work for the Petitioner, Dr. Kassam cited to Patent Owner’s invention in his published papers, and there were “apparent similarities” between Patent Owner’s invention and Petitioner’s competing product.  Id.  The Petitioner resisted the requested discovery as being overly broad.  Id.  It also argued that to the extent there were similarities between the parties’ products, they were superficial and unrelated to the limitations in the claimed invention.  Id.

The PTAB agreed with the Petitioner:

We are unpersuaded that the information being sought by Patent Owner falls under routine discovery pursuant to Rule 42.51(b)(iii).  … Patent Owner did not articulate any reasons sufficient to show that there exists specific information known to Petitioner regarding copying, or any other secondary considerations.  Patent Owner’s position is largely speculative … .  We do not find such speculation sufficient in demonstrating that Petitioner knows of any specific information regarding secondary considerations inconsistent with its position.

Id. at 3.  The PTAB thus denied Patent Owner’s request to compel routine discovery.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.