Prioritization of issues for Markman hearing

One of the most important issues in a patent infringement case is the proper interpretation of various claim terms. Differences among the defendants as to products often leads to the need by different defendants for different claim interpretations to be given higher priority. In many cases involving multiple defendants, the court wants to avoid receiving separate briefs from each of the defendants. In such cases, courts often limit the number of pages that defendants may submit jointly, obligating the defendants to cooperate in putting together a single Markman submission for the Court’s consideration. As a result, the parties have to work together to decide which terms are discussed first in the brief and are given greater treatment in the brief. Where page limits are an issue, getting sufficient space to have an issue treated with the same level of treatment that would be provided in a single defendant case can be one of the most challenging issues for a defendant.

In addition, if a court holds a Markman hearing, it is common that the court will set a time limit for the amount of time that would be reserved for the hearing. Again, order of presentment at the hearing and time allocation amongst defendants is another issue that often needs to be addressed amongst the defendants. If one claim interpretation issue affects all defendants, it is likely to be the primary issue presented to the court in terms of pages in the briefing and allocation of time at the hearing. Issues that affect only one defendant, while important to that one defendant, invariably will be found later in Markman briefing, and later in Markman hearings before the court. As a result, that issue will receive less treatment than what would ordinarily be provided if that defendant was the only defendant participating in briefing the issues.

2. Prioritization of issues in discovery when discovery limitations are applied to defendants as a group

In addition to allocation of time in Markman hearing and briefing, many courts involving multiple defendants set discovery limitations dealing with various issues in the case. Those limitations may include the number of interrogatories, the amount of time that each party may take for depositions, the amount of time that the defendants jointly have to depose certain individuals in the case, including the inventors in a Rule 30(b)(6) deposition of the plaintiff, the amount of time each party may take depositions of common experts, and other provisions that plaintiffs will request to try to avoid defendants ganging up on the plaintiff. 9

For example, in a lawsuit in which a patentee has asserted infringement against five defendants, each of the defendants ordinarily might want to depose the inventors. Under the Federal Rules of Civil Procedure, each defendant ordinarily has the right to take a seven-hour deposition of each inventor. Supposing there are three inventors in the case, if each defendant used all of the available time permitted under the Federal Rules of Civil Procedure, it could take 21 hours to depose the inventors. If each of the five defendants took that time, inventor depositions alone would last up to 105 hours. Further, if each of the five defendants took seven hours to depose every witness in the case, the number of deposition hours could mushroom uncontrollably.

As a result, it is very common in multiple defendant cases for the court to set some limitation on the number of total hours of deposition, either for each defendant group or for all defendants collectively, or a combination thereof. For example, limitations may be set related to the number of hours each inventor may be required to sit for deposition. Instead of requiring each inventor to sit for seven hours of deposition for each of the five defendants, a compromise may be negotiated such that each inventor only has to sit for perhaps some smaller number of hours.

When such limitations are put in place, that obviously places restrictions on the amount of time that the defendants may each pursue different avenues of discovery. This is particularly true when the amount of time allotted for depositions is imposed on the defendants as a group, rather than individually. Defendants might be limited in the number of hours of depositions they can expend on issues that are individual to them or to a subset of the defendants. As a result, this may at some point restrict their ability to fully pursue all of the discovery that they would pursue, in comparison to a litigation in which they are the only defendant.

As a result of these kinds of restrictions on discovery in multiple defendant lawsuits, defendants must clearly prioritize what issues are important to them and push amongst the defendant group to have those issues addressed. This results in issues that ordinarily might be pursued having to take a backseat so that all the defendants have an opportunity to pursue key issues important to them in the lawsuit.