Patent Infringement Litigation In The US District Courts – Part 2

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.

Patent Infringement Litigation In The US District Courts – Part 2

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

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.

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.

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

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.

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.

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:

Step 5: Markman Hearing

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:

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.

Bifurcation Motions.