Patent Owner Tip #8 for Surviving an Instituted IPR: Additional Discovery is Possible, but Should be Carefully Planned
By EsqSocial Corporation 28/05/21
Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. There are three types of discovery at the Patent Trial and Appeal Board (the “Board”): mandatory initial disclosures (pursuant to 37 CFR § 42.51(a)); limited routine discovery (pursuant to 37 CFR § 42.51(b)(1)); and limited additional discovery (pursuant to 37 CFR § 42.51(b)(2)). Limited additional discovery, absent agreement by...
By: Mintz - Intellectual Property Viewpoints