The America Invents Act introduced three new proceedings for challenging the validity of patents. The proceedings—inter partes review, post-grant review and a transitional program for covered business-method patents—culminate in an oral hearing before the Patent Trial and Appeal Board. The hearing, held before a panel of administrative patent judges, is followed by a written decision. Before the hearing, the parties may engage in limited discovery to prepare their positions. But without agreements among the parties, additional discovery requires a motion and leave from the board.
Each of these proceedings shares similar procedural characteristics. When the board grants a petition to institute a proceeding, it will concurrently provide a scheduling order specifying due dates and different discovery periods for the petitioner and patent owner. A typical scheduling order will first provide the patent owner with a discovery period before a due date for filing a response to the board’s decision to grant the petition and motion to amend the claims of its patent. The patent owner may begin deposing the petitioner’s declarants during this discovery period, which begins upon institution of the proceeding.
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