What is Inconsistent Information and When Must Such Information be Disclosed?

By Kelly E. Rose
As we’ve previously discussed, the inter partes review (IPR) and post grant review (PGR) procedures in the USPTO allow for parties to take discovery.  Specifically, Rule 42.51 enumerates the permitted categories of discovery, including: (a) mandatory initial disclosures, (b) routine discovery and (c) additional discovery.  Of particular interest is a subcategory of routine discovery that requires a party to serve relevant information that is inconsistent with a position advanced by the party.

Rule 42.51(b)(1)(iii) requires that
“[u]nless previously served, a party must serve relevant information that is inconsistent with a position advanced during the proceeding concurrent with the filing or documents or things that contains the inconsistency.  This requirement does not make discoverable anything otherwise protected by legally recognized privileged such as attorney-client or attorney work product.  This requirement extends to inventors, corporate officers and persons involved in the preparation or filing of the documents and things.”

In district court, a party has the burden to discover information inconsistent with its opponents positions through interrogatories and requests for productions. In issuing this rule, the USPTO explained that “Board experience has shown that the information covered by § 42.51(b)(1)(iii) is typically sought through additional discovery and that such information leads to the production of relevant evidence.  However, the practice of authorizing additional discovery for such information risks significant delay to the proceeding and increased burdens on the parties and the Office.”  77 Fed. Reg. 48612 at 48622 (August 14, 2012).

This discovery obligation explicitly applies to a larger subset of people than the general duty of disclosure to the USPTO under 37 C.F.R. 1.56, (which is limited to inventors attorneys/agents and other involved in prosecution).  Although the extent and scope of this responsibility to produce inconsistent information is not abundantly clear, there are some indications that the information subject to this requirement is limited.

For example, the USPTO explained that “§42.51(b)(1)(iii) as adopted, limits the scope by : (1) Excluding anything otherwise protected by legally recognized privileges, (2) eliminating the use of the word “noncumulative,” (3) eliminating the requirement that a party specify the relevance of the information, and (4) limiting the rule to only inventors, corporate officers, and persons involved in the preparation of filing of documents in a proceeding.”  Id. at 48639.

In response to concerns regarding the scope of Rule 42.51(b)(1)(iii) the USPTO provided two examples in which disclosures under this rule should be made:

Example 1: Where a petitioner relies upon an expert affidavit alleging that a method described in a patent cannot be carried out, the petitioner would be required to provide any non-privileged work undertaken by, or on behalf of, the petitioner that is inconsistent with the contentions in the expert’s affidavit.

Example 2: Where a patent owner relies upon surprising and unexpected results to rebut an allegation of obviousness, the patent owner should provide the petitioner with non-privileged evidence that is inconsistent with the contention of unexpected properties.  Id.

Further, in Garmin International, Inc. et. al v. Cuozzo Speed Technologies LLC (IPR2012-00001), the PTAB clarified the scope of information required under Rule 42.51(b)(2)(iii).  The PTAB declined to consider the patent owner’s broad requests for discovery as information relating to inconsistent positions under Rule 42.51(b)(1)(iii) and explained that “routine discovery under 37 C.F.R. § 41.51(b)(1)(iii) 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.”

In addition to the USPTO’s limitations, by declining to expand routine discovery under Rule 41.51(b)(1)(iii), the PTAB has limited this information to specific information known to the party.  While the scope of this information remains somewhat unclear, it is evident that this is a limited subset of information.

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