Written Patent Discovery

1. 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

2. 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

3. 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

4. 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”

5. 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

6. 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

7. Formulating Written Discovery Requests • Written discovery game plan • What about RFA’s? • To whom/what is written discovery directed? • Court-imposed discovery limits

8. 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

9. 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

10. 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

11. 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

12. 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)

13. 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