By Douglas A. Robinson, Principal
Law360, New York (December 15, 2014, 10:12 AM ET) — One of the most important ways in which inter partes review proceedings differ from ex parte re-examination is that declarants may be deposed in inter partes reviews. In fact, although discovery is generally limited in inter partes reviews (as compared to federal litigation), depositions of experts and other declarants fall within the category of “routine discovery” that is always allowed under the inter partes review rules. Recent statistics show that expert declarations are included in 87 percent of IPR petitions. Based on experience, the author believes that a similar percentage of patent owners rely on experts in defense of their patents. However, procedural differences between IPRs and federal litigation have a substantial impact on deposition practice in IPR proceedings.