We wrote previously regarding Incyte Corp. v. Concert Pharms., Inc., IPR2017-01256, in which the Board reached different conclusions regarding the availability of two pieces of prior art, over a dissent by Judge Fitzpatrick.  Regarding art referred to as the Concert Backgrounder, the Board’s earlier ruling found public accessibility where the Backgrounder was 1) identified on a cached WebCite page, 2) cited in an International Search Report for a patent application, and 3) used in a law review article that cited the WebCite page.  In a new decision in the same case, the Board ruled on Petitioner’s motion for additional discovery regarding public availability of the Concert Backgrounder, granting the discovery in part.  Interestingly, the Board declined to allow discovery that it viewed as changing the Petitioner’s theory of public availability of the art.

In its motion for discovery, petitioner Incyte proposed to serve eight requests for admission, one request for production, and four interrogatories.  IPR2017-01256, Paper 51 at 2.  Patent Owner Concert opposed the motion, and Incyte filed a reply.  Id.  The Board first reiterated that discovery in IPR proceedings is narrower than in district court litigation, noting that it “generally take[s] a conservative approach to granting additional discovery.”  Id.  The Board then evaluated the merits of Incyte’s motion in view of the Garmin factors, which “determin[e] whether additional discovery is in the interest of justice.”  Id. at 3.  Those factors include:

  1. Whether there is more than a possibility and mere allegation that something useful will be found;
  2. The parties’ litigation positions and underlying basis;
  3. A party’s ability to generate equivalent information by other means;
  4. Easily understandable instructions; and
  5. Whether the requests are not overly burdensome to answer.

Id. (citing Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26) (precedential)).

Initially, Concert offered to stipulate to the authenticity of the Concert Backgrounder, to moot various discovery requests, but the Board agreed with Incyte that the stipulation did not moot all the requested discovery.  IPR2017-01256, Paper 51 at 3-4.  The Board therefore continued to an analysis of the Garmin factors for the remaining requests.

Factor 1: More than a Possibility and Mere Allegation that Something Useful Will Be Found

Incyte argued that it was more than possible that Concert would have useful information because the Backgrounder is Concert’s document, found on Concert’s website.  Id. at 4.  Concert conceded this much, but argued in response that the discovery would not be useful because it was not consistent with Incyte’s theory of public accessibility of the Backgrounder; i.e., that it could be found “via the cached WebCite® page.”  Id. at 4-5.  Any broader discovery, Concert argued, “would be allowing Petitioner to change its strategy of public availability, which is not in the interest of justice.”  Id. at 5.

The Board agreed with Concert that the requested discovery must be limited to the theory of availability.  As the Board noted:

“[T]he Petition relies on the cached WebCite page to establish the public availability of the Concert Backgrounder.  To allow Petitioner to now investigate other theories as to when, where, and how the Concert Backgrounder allegedly became publicly available would allow Petitioner to shift the basis of its argument to something not presented in the Petition.  We decline to allow Petitioner to do so, as we agree with our colleagues in Hughes Network that “[p]ermitting a change in strategy for [Petitioner] is not in ‘the interest of justice.’”

Id. at 5-6 (quoting Hughes Network Sys., LLC v. Calif. Inst. Tech., IPR2015-00059, Paper 34 at 9 (PTAB Dec. 30, 2015)).  The Board noted that they key “issue is whether the document was publicly available, which Petitioner has attempted to establish through the cached WebCite page.  Any requests outside that theory of public availability would be beyond the scope of a proper reply and, therefore, not useful to this proceeding.”  Id. at 6.  The Board therefore limited the scope of discovery to facts about the particular cached webpage identified in the petition, and Concert’s knowledge of the availability of the cached document at WebCite; so limited, this factor favored granting the motion.  Id. at 6-7.

Factor 2: Litigation Positions and Underlying Basis

The Board found this factor neutral because the parties are not litigating in district court.  Id. at 8.

Factor 3: Ability to Generate Equivalent Information by Other Means

The Board agreed with Incyte that Concert “is in the best position to authenticate and provide information regarding its own document.”  Id.  The Board therefore found that this factor favored discovery, but only to the extent the discovery “relate[s] to Petitioner’s cached WebCite theory of public availability.”  Id.

Factors 4 and 5: Easily Understandable Instructions and
Requests Not Overly Burdensome to Answer

Incyte argued that its discovery requests were easily understandable and narrowly tailored to relevant information.  Id.  Concert, unsurprisingly, disagreed.  Id.  Here, the Board agreed with Concert, again to the extent that the discovery was not coextensive with Incyte’s theory of public availability.  Id. at 9.  When properly limited, however, the Board found the requested discovery permissible.  Id. at 9-10.

Considering all the Garmin factors, the Board granted Incyte’s motion for additional discovery as being in the interest of justice.  Id. at 10.  But, the Board granted the discovery only to the extent that it sought admissions that the Concert Backgrounder was available on WebCite as prior art.  This decision therefore serves as guidance on both the Board’s analysis of the Garmin factors, and a way in which the Board may limit requested discovery to be consistent with the movant’s theory of the evidence.