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
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Because of the mandatory disclosure of Rule 26, complaint and answer are the
parties’ first discovery requests
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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”
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Need to balance benefit of free, early discovery vs. risk of prematurely showing
cards or advocating ill-conceived position
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Initial disclosures are designed to provide basic information
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What they don’t give you:
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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
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E.g., NDGA LPR’s
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LPR’s generally address the categories of information not disclosed under Rule 26
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Contentions
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LPR 4.1(b): infringement contentions
LPR 4.2: response to infringement contentions
LPR 4.3: invalidity contentions
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Some “bad stuff” from patentee
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Prior art
§ 112 defenses
Other defenses
LPR 4.1(c): patentee’s documents relevant to statutory bars and DOI
LPR 6: claim construction contentions and support
What’s left?
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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?
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Can be directed to almost any issue
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Generally, no limitation on number
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RFA’s can be used at any time
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RFA’s admitted if recipient does not timely respond
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Difficult for recipient to be evasive or avoid answering
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If response evasive, can ask court to rule
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Once admitted, admission is conclusive
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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?
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Serve RFA’s with companion interrogatory
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Serve companion document request
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Example of use of RFA’s from the Osteotech litigation
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Osteotech RFA’s
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“RFA No. 52 [53]: Admit that DynaGraft Gel [Putty] has new bone growth-inducing
amounts of demineralized osteogenic bone powder.”
“Response: Admitted.”
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Osteotech moved for summary judgment
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GenSci moved to withdraw its admissions under Rule 36(b)
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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