The statutory standard to seek discovery in the PTAB is “necessary in the interest of justice.” 35 U.S.C. § 316(a)(5). The PTAB has previously held that a number of factors are important in determining whether discovery requests are “in the interest of justice,” including the likelihood of discovering something useful:
- More Than A Possibility And Mere Allegation -- The mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient to demonstrate that the requested discovery is necessary in the interest of justice. The party requesting discovery should already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered.
- Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013) (discussing factors).
Here, the PTAB denied Patent Owner’s request because it amounted to no more than a mere allegation of some kind of general association between Petitioner and RPX. “The alleged facts presented by Patent Owner during the conference call do not show more than a mere possibility that something useful will be discovered and are therefore insufficient to show beyond mere speculation that discovery would be in the interests of justice.”
Mangrove Partners Master Fund, Ltd. v. Virnetx Inc., IPR2015-01046, Paper 18 (PTAB Nov. 12, 2015)