Step 3: Fact Discovery (RFPs, ROGs, RFAs, Depos, Subpoenas)

Scope of Discovery

  • The US legal system allows for extensive pre-trial discovery.

  • Generally, a party is entitled to any information relevant to a claim or defense in the lawsuit.

  • Documents or information falling within certain privileges, such as the attorney-client privilege or the attorney work product immunity, are immune from discovery.

Discovery: Requests for Production (RFPs)

  • No limit to the number of RFPs.

  • Often exceed 100 per side. Patent litigation often involves the exchange of hundreds of thousands of pages. When patent litigation involves large corporations or many issues, document production surpassing 1 million pages is not uncommon.

Discovery: Interrogatories (ROGs)

  • There is a default limit of 25 interrogatories per side. The parties often request additional interrogatories from the court.

Discovery: Requests for Admission (RFAs)

  • There is generally no limit to the number of requests for admission each party can propound on the other.

  • Generally served toward the end of discovery in order to provide greater specificity.

Discovery: Depositions (Depos)

  • Only 10 depositions may be taken by a party without leave of court. Depositions are typically limited to 7 hours on a single day.

  • A party may also take what is known as a Rule 30(b)(6) deposition of a company. A Rule 30(b)(6) deposition notice describes with reasonable particularity the topics for examination.

  • The noticed party must then designate a “person most knowledgeable” to testify on behalf of the company about information known by the company regarding the matters listed in the Rule 30(b)(6) notice.

Discovery: Subpoenas

  • Third party discovery is permitted, but additional safeguards exist to protect third parties from undue burden and expense.

  • A party can serve a request for documents and/or for a deposition on a third party by accompanying the request with a subpoena, which must be served in person on the person or entity from whom the discovery is sought.

  • A third party must respond to a properly served subpoena, but can apply to the court for relief if, for example, the requests are unduly burdensome.

Step 4: Expert Discovery

  • U.S. patent litigation routinely includes experts:

    • Experts provide expert opinions/reports on infringement, patent invalidity, and damages.
    • Expert report should contain a complete statement of all opinions to be expressed at trial and reasons for those opinions.
    • The experts will be deposed regarding their opinions (after they provide an expert report, but prior to trial) by the opposing party’s counsel.

Step 5: Markman Hearing

MarkmanHearing: Claim Construction Resolved

  • In the U.S., the process of construing claims is often referred to as the Markman process

  • Although not required, most patent infringement proceedings also involve Markman process:

    • Markman includes a hearing where the judge examines evidence from all parties on the appropriate meaning of relevant key words used in a patent claim;
    • Markman resolves issues of claim construction prior to trial.
  • Although Markman hearings can occur at different times in different cases, they generally occur during discovery and well in advance of trial.

  • The court’s claim construction order following Markman will be part of the jury instructions if the case reaches trial.

Step 6: Summary Judgment

  • Summary judgment motions ask the court to rule in favor of the moving party without need for trial on questions of fact, including infringement and validity.

  • They are typically brought after the court has completed the claim construction process.


  • Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law, decided by the judge alone.

Step 7: Pre-Trial

  • Motions In Limine.

    • These motions seek to exclude evidence at trial if, for example, the evidence is irrelevant, prejudicial, or will cause jury confusion.
    • Often heard by the court at the pretrial conference.
    • Common issues relate to undisclosed or belatedly disclosed prior art or expert opinions not disclosed in expert reports.
  • Bifurcation Motions.

    • Bifurcation refers to dividing different issues of a patent case into separate trials, e.g., liability and damages. It is the exception and not the rule.