A First Glimpse on the Scope of Discovery in the New Post-Issuance PTO Proceedings

Scott Daniels | November 20, 2012

A major concern for practitioners contemplating the new post-issuance proceedings at the Patent Office has been the scope of discovery that the APJs would permit the parties.  Would it be as expansive and expensive as discovery in the District Courts?  In its various publications, the Patent Office indicated that it would not allow open-ended discovery, but that it would enforce narrow discovery requests that pin-point documents and information having a clear relevance to the case-determinative issues.

Last Thursday in SAP America v. Versata, CBN2012-00001, the Patent Office gave a concrete example of what it meant.  Summarizing a conference call among the parties, three APJs, including Lead Administrative Law Judge Michael Tierney, ruled on a series of discovery requests.

They granted requests for specific expert reports, deposition transcripts and a JMOL motion.  On the other hand, they did not grant a request for the exhibits and appendices attached to these five documents; still, they suggested that the two parties discuss the relevance of these documents, and they invited the requesting party to renew its discovery requests if the parties could not agree.  Finally, the APJs denied outright a broad request for “any documentation relating to the ‘R/3’ documentation.”

The message to the bar is to make specific discovery requests, explaining the relevance of the requested information to the case.

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