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In a recent article about discovery at the Patent Trial and Appeal Board (PTAB), Law360 quoted Jenner & Block Partner Michael G. Babbitt on his advice for obtaining additional discovery. The article identified the dos and don’ts when attempting to obtain additional discovery during inter partes review. Mr. Babbitt emphasized the importance of a clear and targeted request that is sent as early as possible.
“You need to be asking for targeted discovery,” he said, adding that the main pitfall for parties seeking additional discovery is an overbroad request.
Mr. Babbitt also spoke about the importance of communication with opposing counsel. "Meeting and conferring and thinking about where there might be areas of agreement is particularly important in PTAB proceedings," he said. "If you don't do that, the board is not going to be very happy with you when you jump on a call talking about discovery."
"Distill the dispute, meet and confer with the other side and present something that the board can actually decide,” he added.
Mr. Babbitt focuses his practice on complex civil litigation involving intellectual property and technology and is a registered patent attorney before the PTAB. He is a member of the firm’s Patent Litigation and Counseling and Technology Litigation Practices.