Patent re-examinations used to have no provisions for discovery. Under their duty of disclosure, patent owners had to provide all material relevant to patentability to the Patent and Trademark Office (PTO), but that was it—no depositions, no document discovery, no protective orders. Now, with the new contested proceedings available under the America Invents Act (AIA), limited discovery is available to the parties and the PTO has the authority to manage and to enforce it.
Discovery can be especially worrisome for inside counsel. For PTO contested cases, limited discovery is available to the parties at each phase of the contested proceeding, alternating between patent owner and petitioner. Mandatory document production, depositions and evidentiary challenges can incrementally drive up costs of the proceeding. And for unwary inside counsel, the amount could be significant. With the initial set of contested cases in the early stages, it is too early to know for sure how the Patent Trial and Appeal Board will manage discovery. But we can glean information from the published rules and past experience with interference practice, which also has limited provisions for discovery. Here is the good, the bad and the potentially ugly aspects of discovery in contested proceedings.
The bad: Inside counsel should expect document production and deposition testimony to be fully available to the public
In civil actions, it is easy to keep material out of the public record through the applicable protective order. This will likely not be true for PTO contested cases and inside counsel should expect the proceeding to be conducted in full public view. Given the likelihood that a contested proceeding on a patent will happen either before or concurrently with a civil action, a party’s arguments (including claim construction) and public disclosures to the board should be carefully reviewed.
The rules and comments discussing protective orders show the board will likely default towards public disclosure of any information necessary to its decision. Parties wishing to keep produced documents or testimony confidential must do so by motion and certify that they tried to resolve the dispute before filing the motion. For fully confidential documents, a non-confidential description is required. For partially confidential documents, the motion must explain why the material should be protected, the party must submit sealed and redacted versions, and the party seeking protection must also explain why the information should remain confidential. The board has the final say and can sua sponte decide that information should be public.