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