Brandon White was quoted in the Law360* article, "The Do's and Don'ts of Extra Discovery at the PTAB," regarding how to handle the discovery process with the Patent Trial and Appeal Board.

"This isn’t a fishing expedition," Brandon said. "This is, you're trying to show that something does exist. You almost need to know what you're going after before you request it. You need to show—by pointing to the declarations, arguments made in the petition, publicly available information—some reason to believe that the discovery is likely to provide something relevant," he added.

One of the benefits of IPRs, Brandon said, is that they are laser-focused on the merits. PTAB judges aren't going to let tangential issues distract from the reviews. The information being sought in discovery needs to be important. And it must be important for this particular review.

"You need to show that what you are seeking goes to the heart of the merits," Brandon said. "This isn't an opportunity to preview a district court case or flesh out some other proceeding."

*Subscription-based publication