• Benefits of Showing Discovery as “Routine” Instead of “Additional”
  • May 14, 2015 | Author: H. Wayne Porter
  • Law Firm: Banner & Witcoff, Ltd. - Washington Office
  • Certain types of “routine” discovery are available in a trial proceeding before the PTAB. Under 37 C.F.R. § 42.51(b)(1), routine discovery includes (i) any paper or exhibit cited in a paper or in testimony, (ii) cross-examination (deposition) of witnesses providing affidavits, and (iii) relevant information that is inconsistent with a position advanced by a party. Routine discovery is intended to be self-executing, and all parties have the burden to provide such discovery.i The rules provide that a party may move for “additional discovery” that includes other types of materials. In practice, however, it is very difficult to meet the high burdenii that the PTAB sets for obtaining additional discovery.