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.” Continue reading “What is Inconsistent Information and When Must Such Information be Disclosed?”

No Fishing Allowed – Limits on Discovery Before the PTAB

By Anthony Pisano
The addition of discovery to review proceedings before the Patent Trial and Appeal Board (PTAB), such as inter partes review, and post-grant review, have opened up the doors to new kind of challenges before the PTO.  However, attempting to receive additional discovery beyond that required by the rules in proceedings before the PTAB is not as easy as in District Court litigation.  In post-grant and inter partes proceedings, 37 C.F.R. §42.51(b)(2) provides the rules for additional discovery: parties are given the option to agree to additional discovery between themselves, and if they are unable to do so, the moving party must present a reasoning to the PTAB as to why the additional discovery is necessary “in the interests of justice.”  In post-grant reviews, the moving party is restricted even more because it must show that the additional evidence is directly related to factual assertions advanced by either party in the proceeding (See 37 C.F.R. §42.224). Continue reading “No Fishing Allowed – Limits on Discovery Before the PTAB”

IPR and Stays of Co-Pending Litigation

By Lana Gladstein
What are the odds of getting a stay of co-pending litigation after filing an inter partes review (“IPR”) involving all or some of the same patents?  The answer is not a simple one.  While there has been some data suggesting that, purely statistically, the odds are in favor of getting a stay (e.g., http://www.aiablog.com/post-grant-proceedings/will-an-ipr-result-in-a-stay-of-co-pending-litigation/), ultimately the grant of a stay is highly fact-dependent and discretionary with the court handling the litigation.  A recent decision out of the District of Delaware, Davol, Inc., v. Atrium Medical Corporation, Civ. Action No. 12-958-GMS (D.Del., June 17, 2013), provides valuable guidance in gauging whether a litigation stay in view of an IPR is likely. Continue reading “IPR and Stays of Co-Pending Litigation”