DISCOVERY ISSUES IN PATENT CASES

Needless to say, discovery in any complex civil litigation is crucial to assembling the evidence

needed to win the case. Patent litigation is no different in this respect. In many respects, discovery issues

in patent litigation are no different from discovery issues that arise in all other cases. For example, the

tools provided by the Federal Rules of Civil Procedure are the means by which most discovery is

conducted. However, there are a number of important issues that are either patent-litigation-specific or

that tend to be particularly important in patent litigation. For example, many of the districts in which

most patent litigation is conducted have enacted special local rules just for patent disputes. Likewise,

patent cases involve a number of unique privilege issues.

II. WHAT INFORMATION PARTIES TYPICALLY WANT IN DISCOVERY

Although each patent case is different, set forth below is a list of the most common types of

information or documents a patentee and an accused infringer should seek during discovery

A. Basic Discovery Every Patentee Should Seek from the Accused Infringer

• Claim construction position and support therefor

• Basis for each defense (narrow the shotgun list of defenses from the Answer)

• Non-infringement contentions (which elements are missing?)

• Development, operation, and make-up of accused products

• Identification of alleged prior art

• Invalidity contentions (element-by-element mapping)

• Evidence of accused infringer’s knowledge of patent-in-suit (possible copying,

trigger date for willfulness, include patents citing to patent-in-suit)

• Opinions of counsel regarding patent

• Financial information regarding accused device (sales, costs, profits)

• Licenses regarding patents and technology at issue

B. Basic Discovery Every Accused Infringer Should Seek from the Patentee

• Claim construction position and support therefor

• Identification of all accused products

• Identification of all asserted claims

• Infringement contentions (element-by-element mapping)

• Dates for conception and reduction to practice (and evidence thereof) for each claim;

evidence of diligence

• Alleged priority date for each claim (particularly when patent issued from a

continuation-in-part application)

• All disclosures/sales/offers/uses, etc. of the invention before the patent application

was filed

• Damage theory (lost profits or reasonable royalty)

• Evidence for reasonable royalty (other licenses/settlements regarding patent,

success/failure of commercial embodiment; may be limited to timeframe of

“hypothetical negotiation”)

• Prior art

• Other litigations of patent (may provide a trove of prior art)

• Evidence of marking under 35 U.S.C. § 287 information (all products that practiced

patent; any evidence of marking) Licensees?

• Evidence of “actual notice” under 35 U.S.C. § 287

• Pending and abandoned applications and prosecution files in same family as patent

in suit