Written Patent Discovery

Decline of notice pleading and its impact on patent litigation

Rule 26, FRCP and written patent discovery

Local Patent Rules

Goals of written patent discovery

Formulating written patent discovery requests

Why the Decline of Notice Pleading?

Claims for patent infringement, invalidity, inequitable conduct must satisfy Iqbal and Twombly

Under Rule 26, FRCP, pleadings shape discovery Mandatory initial disclosures

Rule 26, FRCP

Because of the mandatory disclosure of Rule 26, complaint and answer are the parties’ first discovery requests The disclosing party has to give you its “good stuff” – the information it may use to

support its claims or defenses Scope of the obligation is directly proportional to the detail and clarity of your

allegations The more the ambiguity or vagueness in your pleading, the more room the

disclosing party has to avoid producing its “good stuff”

Need to balance benefit of free, early discovery vs. risk of prematurely showing cards or advocating ill-conceived position

Initial disclosures are designed to provide basic information

What they don’t give you: Party’s claim construction Party’s contentions – e.g., infringement and validity The “bad stuff” – the stuff that may hurt disclosing party or help you

Local Patent Rules

E.g., NDGA LPR’s

LPR’s generally address the categories of information not disclosed under Rule 26 Contentions

LPR 4.1(b): infringement contentions LPR 4.2: response to infringement contentions LPR 4.3: invalidity contentions

Prior art § 112 defenses Other defenses

Some “bad stuff” from patentee LPR 4.1(c): patentee’s documents relevant to statutory bars and DOI

LPR 6: claim construction contentions and support What’s left?

All of defendant’s “bad stuff” Some of patentee’s “bad stuff”

Goals of Written Patent Discovery

Discovery by plaintiff patentee Learn details of infringing device or process and its

development Learn bases for defendant’s defenses and facts that

undermine those defenses Discover facts related to damages

E.g., defendant’s infringing sales Use information discovered to refine claim

construction and develop case theory

Goals of Written Patent Discovery

Discovery by defendant Learn bases for infringement claim and facts that

undermine patentee’s claim Discover facts related to recovery of damages by

patentee E.g., manufacturing capacity, license agreements

Investigate sources of information related to novelty requirements under § 102

Use information discovered to refine claim construction and develop case theory

Formulating Written Discovery Requests

Written discovery game plan

What about RFA’s?

To whom/what is written discovery directed?

Court-imposed discovery limits

Written Discovery Game Plan

Reserve interrogatories for discovering facts Use Rule 26 disclosures, LPR disclosures, and

interrogatory answers to identify documents to request Use 30(b)(6) document deposition in conjunction with

documents requests to identify relevant documents and confirm they were produced

Once you have most of the documents you need, identify individual deponents

What About RFA’s?

Can be directed to almost any issue

Generally, no limitation on number

RFA’s can be used at any time

RFA’s admitted if recipient does not timely respond

Difficult for recipient to be evasive or avoid answering

If response evasive, can ask court to rule

Once admitted, admission is conclusive

Under Rule 37(c), sanctions available

What About RFA’s?

Examples of use in patent litigation Nonenablement defense

“Admit that DeKalb has tried, but failed, to produce fertile, transgenic corn plants for the following cell lines: X, Y, Z, . . .”

“Admit that of the 120 cell lines that DeKalb attempted to transform to produce fertile, transgenic corn plants, it only was able to produce fertile transgenic corn plants from 4 of those cell lines.”

Infringement claim Admissions that can be used to establish claim coverage

Osteotech case below

What About RFA’s?

Serve RFA’s with companion interrogatory

Serve companion document request

Example of use of RFA’s from the Osteotech litigation Osteotech RFA’s

“RFA No. 52 [53]: Admit that DynaGraft Gel [Putty] has new bone growth-inducing amounts of demineralized osteogenic bone powder.”

“Response: Admitted.”

Osteotech moved for summary judgment

GenSci moved to withdraw its admissions under Rule 36(b) Promote presentation of merits Not prejudice the requesting party

But for the RFA’s, summary judgment would not have been granted

To Whom/What Is Written Discovery Directed?

Parties – filling the gaps Claim construction Information that you expected the other party to disclose, but

it didn’t Information the other party might consider to be “bad stuff”

Third parties Typically takes the form of subpoena duces tecum

Try to take discovery from persons with knowledge of relevant prior art or the use patentee made of his invention before the critical date

Service providers (informal)

Court-Imposed Discovery Limits

Be aware of written discovery limits established in Rule 26(f) discovery order Limits on # of interrogatories Limits on # of document requests Limits on # of depositions Possibly limits on # of RFA’s