This article examines the newly enacted patent reform law, specifically looking at the scope of discovery in administrative proceedings that review the validity of issued patents. A recent lawsuit by Cordis, a medical device company, against the PTO could be kicking off a rise in these kinds of discovery-related suits.
At issue in the Cordis matter is the PTO's refusal to let Cordis subpoena companies challenging its patents in an inter partes re-examination, stating that their policy is not to allow discovery in review proceedings.
However, the America Invents Act calls for discovery in both inter partes review and post-grant review. But the scope of what that discovery will be is not completely clear at this time.
While the PTO has not issued regulations for the new inter partes review regime, the patent-reform law generally strengthens PTO procedures allowing parties to challenge patents.
"The statute painted with a broad brush and left a lot of [discovery] details for the PTO to determine," said Stuart Meyer. Examples include the timing and the nature of what can be said and who can make statements, Meyer said. "[These] are all important features as to how usable or how relevant the rules will become."