Discovery Issues in Patent Litigation: Making the Most of the Federal Rules


The following is an excerpt from an article written by Douglas Nemec (Partner at Skadden and Practice Center Contributor), and his colleagues Hope S. Yates, Devin Kothari and Gayle Denman.

Try to imagine patent litigation without discovery.  For most of us such a thing is hard to conceive.  Aside from the rare case in which a court grants a temporary restraining order or preliminary injunction request based only on the moving papers, U.S. courts simply do not grant relief for patent infringement without first allowing some discovery.  Practitioners outside the U.S. may question whether discovery is really necessary, but that point is seldom debated in the U.S.  Rather, the ongoing debate in U.S. federal practice revolves around how to make the discovery process maximally efficient without sacrificing its very purpose – the discovery of evidence.  After all, the great struggle in every patent litigation is balancing the fact that discovery is by far the most expensive part of the process with the fact that the vast majority of cases settle during the course of discovery, as a result of facts revealed through discovery.

Reasoned debate has yielded the Federal Rules of Civil Procedure, an ever-evolving set of rules governing discovery (and all other procedure) in the U.S. district courts.  Supplementing the rules is an enormous body of case law interpreting and applying the Federal Rules, as well as other procedural rules and concepts.  The existence of the Federal Rules will not be news to any reader of this article.  Yet many of the rules are underutilized or neglected entirely, particularly in evolving areas such as electronic (e-) discovery.  Many practitioners, moreover, take a formulaic approach to discovery that saves expense in the short run but ultimately leads to inefficiency and exposes them to a plethora of dangers that advance planning and adherence to the prescriptions of the Federal Rules would otherwise eradicate.  The purpose of this article is first to propose alternatives to certain inefficient discovery practices, and second to cast new light on various procedural rules and principles that practitioners can employ to enhance the effectiveness and efficiency of discovery.

Plan Ahead Whenever Possible

Begin Discovery Efforts Pre-Suit, or Pre-Answer

“Plan ahead” is one of a number of truisms that will appear in the course of this article.  While it might seem like pointing out the obvious, early preparation for discovery simply is not the norm.  For plaintiffs there are often business pressures that require a case to be filed urgently, in which case discovery preparation goes by the wayside.  For defendants a lawsuit often comes as a complete surprise, in which case resources are devoted to evaluating the substance of the allegations and discovery preparation again goes by the wayside.  But more often than either of these eventualities, discovery preparation is consciously delayed to avoid unnecessary expense in the event the case quickly settles.  This latter circumstance can and should be avoided.  Having a case settle early after some wasted effort on discovery preparation is far better than finding oneself scrambling to take or respond to discovery.

When filing or anticipating the receipt of a complaint, counsel would be well advised to discuss the human and financial costs of discovery with their clients.  Early, frank discussion is likely to sidestep any tensions and apprise the client of the possible consequences of discovery.  Counsel should also think critically about the need for a discovery vendor from the onset of litigation, both to avoid internal disruptions and to avoid potential claims of bias.

Where feasible, start your preparation for discovery by talking with your client’s in-house Information Technology (IT) and records managers.  Become familiar with your client’s document retention and destruction policies, their active (and inactive, or legacy) computer systems, and the storage media for their archived data.  Put the in-house counsel and the IT manager in touch to streamline communications about technical problems.  Discussing these issues ahead of time will allow your client’s IT department to do the research necessary to streamline discovery by formulating better document searches, getting rid of duplicate documents, and setting internal quality control parameters.

After this discussion, it is best to collect and review key documents from your client’s files.  Not only will this expedite the case, but it may also reveal crucial evidence at a point in the case when theories and arguments can be adjusted to account for it.  It is also worth thinking about your client’s documents from your opponent’s perspective.  Finding and reading the documents that your opponent is likely to request should apprise you of your weaknesses and, where relevant, help you formulate a complaint that anticipates certain defenses.

Particularly when ESI is prevalent, outside counsel would be well advised to use discovery tools to narrow and focus the scope of discovery.  The Federal Rules now require that initial disclosures include descriptions (by category and location) of all ESI.[1] More directed tools include interrogatories[2] and “quick peeks,” where both parties take a limited glance at their opponent’s information systems to identify relevant document troves.[3]

In addition to tending to one’s own discovery materials, litigants should give early consideration to alternate sources of discovery.  Oftentimes there are multiple entities that could be named as defendants (or counterclaim defendants) in a case, but are not essential to maintaining a cause of action.  The need for discovery from these parties may make the difference between including them in a suit or not.  This can be particularly important when overseas entities are involved.  Litigants should not assume that they will be entitled to discovery from an overseas parent company, even when the opposing party is wholly owned by that entity.[4]

To the extent possible, consider retaining expert witnesses at the pleadings stage in a case.  Doing so ensures that you will beat your opponent to your expert of choice.  More importantly, engaging experts early allows you to rely on their insights to formulate case strategy and to focus discovery.  Early engagement of experts, however, is not without its pitfalls.  If you intend to present an expert for testimony in your case, proceed on the assumption that any communications with that expert, either orally or in writing, will be subject to discovery.[5] In addition, disclosures to experts that become subject to discovery may result in a waiver of privilege or work product protection.[6] Non-testifying or consulting experts enjoy greater protection from discovery, but are still not immune.[7] Proper designation of experts as “testifying” or “non-testifying” is essential from the outset because privilege will likely be waived regardless of whether the “testifying” expert ultimately testifies.[8]

Click here for the full article Discovery Issues In Patent Litigation – Making the Most of the Federal Rules.

Douglas Nemec will be speaking at the upcoming PLI program Patent Litigation 2010 scheduled for November 15-16, 2010 in New York City.

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