37 C.F.R. § 42.51

Discovery

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(a) Mandatory initial disclosures.

(1) With agreement. Parties may agree to mandatory discovery requiring the initial disclosures set forth in the Office Patent Trial Practice Guide.

(i) The parties must submit any agreement reached on initial disclosures by no later than the filing of the patent owner preliminary response or the expiration of the time period for filing such a response. The initial disclosures of the parties shall be filed as exhibits.

(ii) Upon the institution of a trial, parties may automatically take discovery of the information identified in the initial disclosures.

(2) Without agreement. Where the parties fail to agree to the mandatory discovery set forth in paragraph (a)(1), a party may seek such discovery by motion.

(b) Limited discovery. A party is not entitled to discovery except as provided in paragraph (a) of this section, or as otherwise authorized in this subpart.

(1) Routine discovery. Except as the Board may otherwise order:

(i) Unless previously served or otherwise by agreement of the parties, any exhibit cited in a paper or in testimony must be served with the citing paper or testimony.

(ii) Cross examination of affidavit testimony prepared for the proceeding is authorized within such time period as the Board may set.

(iii) Unless previously served, a party must serve relevant information that is inconsistent with a position advanced by the party during the proceeding concurrent with the filing of the documents or things that contains the inconsistency. This requirement does not make discoverable anything otherwise protected by legally recognized privileges 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 or things.

(2) Additional discovery. (i) The parties may agree to additional discovery between themselves. Where the parties fail to agree, a party may move for additional discovery. The moving party must show that such additional discovery is in the interests of justice, except in post-grant reviews where additional discovery is limited to evidence directly related to factual assertions advanced by either party in the proceeding (see § 42.224). The Board may specify conditions for such additional discovery.

(ii) When appropriate, a party may obtain production of documents and things during cross examination of an opponent's witness or during authorized compelled testimony under § 42.52.

(c) Production of documents. Except as otherwise ordered by the Board, a party producing documents and things shall either provide copies to the opposing party or make the documents and things available for inspection and copying at a reasonable time and location in the United States.

[77 FR 48669, Aug. 14, 2012, as amended at 80 FR 28565, May 19, 2015]

Notes of Decisions

Cited in 27 cases (11 in the last 5 years), 2014–2025 · leading case: Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329 (Fed. Cir. 2018).

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Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329 (Fed. Cir. 2018). · cites it 6× “” 37 C.F.R. § 42.51 . The discovery sought by Wi-Fi did not qualify as mandatory discovery and therefore was allowable, if at all, only as “additional discovery.”

Saint Regis Mohawk Tribe v. Mylan Pharm. Inc., 896 F.3d 1322 (Fed. Cir. 2018). · cites it 4× “§ 316 (a)(5); see also 37 C.F.R. § 42.51 . In FMC, the Court rejected the idea that sovereign immunity could be circumvented by merely moving a proceeding from an Article III court to an equiv- alent agency tribunal.”

Duncan Parking Tech. v. Ips Grp., Inc., 914 F.3d 1347 (Fed. Cir. 2019). “IPS responds that Schwarz's drawing the block diagram does not mean that he conceived the relevant electronics, and that "Schwarz's conception of aspects of Figure 8 not recited in the '310 claims is irrelevant.”

Thryv, Inc. v. Click-To-Call Tech., LP, 140 S. Ct. 1367 (2020). “§ 316 ; 37 CFR §§ 42.51 - 42.65 (2019). At the same time, the burden of proof is lower-requiring challengers like Thryv to prove unpatentability only by a preponderance of the evidence, § 316(e), rather than under the clear and convincing standard that usually applies in court.”

Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). “They oversee discovery, 37 C.F.R. § 42.51 , apply the Federal Rules of Evidence, 37 C.”

Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015). “Baxter, see 37 C.F.R. § 42.51 (b)(l)(ii), and that Belden could move to file non-argumentative observations (up to five pages) calling the Board’s attention to relevant aspects of the cross-examination.”

PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC, 815 F.3d 734 (Fed. Cir. 2016). “§ 316 (a)(5); 37 C.F.R. § 42.51 . A trial is conducted by a panel of at least three administrative law judges.”

Regents of the Univ. of Minn. v. Lsi Corp., 926 F.3d 1327 (Fed. Cir. 2019). “§ 316(a)(5) ; 37 C.F.R. § 42.51 (b) ; see 154 Cong. Rec.”

Westerngeco LLC v. Ion Geophysical Corp. (In Re Westerngeco LLC), 889 F.3d 1308 (Fed. Cir. 2018). “19; see 37 C.F.R. § 42.51 (b)(2) (authorizing additional discovery when it is "in the interests of justice"), but we do not.”

Power Integrations, Inc. v. Semiconductor Components Indus., LLC, 926 F.3d 1306 (Fed. Cir. 2019). “After institution, Power Integrations requested authorization to file a motion under 37 C.F.R. § 42.51 (b)(2) for additional *1310 discovery on the relationship between ON and Fairchild.”

Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018). “Soon after Bungie filed its IPR petitions, Worlds moved under 37 C.F.R. § 42.51 (b) for routine discovery or, alternatively, *1240 additional discovery, requesting information regarding whether Activision should have been named as a real party in interest to the proceedings,…”

Merck & Cie v. Gnosis S.P.A., 820 F.3d 432 (Fed. Cir. 2016). · cites it 2× “62 (a), it oversees various discovery obliga- tions, 37 C.F.R. § 42.51 , and it hears oral argument, 37 C.”

Show all 27 citing cases →

— 37 C.F.R. § 42.51(b)(2) — 1 case

Wildcat Licensing Wi LLC v. Atlas Copco Tools & Assembly Sys. LLC (Fed. Cir. 2024).

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