Introduction to Discovery
I’ve gone over the basics and chronology of a patent lawsuit, and in today’s episode, I’m going over the part called discovery. Discovery is probably the most expensive part of patent litigation. It’s where each side tries to obtain information from the other side, and this information can be written, oral, or involve the production of physical objects.
Why Is Discovery Important?
One side has accused you of infringing their patent. One thing you might try to do is invalidate their patent—maybe they sold or disclosed their invention before filing a patent application. You’re going to want information on when they sold it, what information they were aware of when they filed their patent application, and who the inventors are—because if they left off an inventor, that might invalidate the patent.
Initial Disclosures
Let’s talk about some of the basics. The first step is called initial disclosures, under Federal Rules of Civil Procedure Rule 26(a), if you want the full legal reference.
In the initial disclosures, you must provide:
• Names, addresses, and phone numbers of individuals likely to have discoverable information. This could be inventors, company employees, executives—anyone with relevant knowledge.
• A copy or a description (by category and location) of documents and things in your possession that support your claims or defenses.
• A computation of each category of damages you are claiming.
• Any insurance agreement that could be used to satisfy a judgment if you lose the case.
Of course, there are exceptions. You’re not required to produce trade secrets, privileged information, or emails to your attorney. Those are protected under attorney-client privilege and other legal doctrines.
Sometimes, there’s a fight about what information has to be disclosed. A judge may need to step in and decide whether one party has a right to certain information. Sometimes, that information can be provided under a protective order so only certain people can see it, and it doesn’t become part of the public record.
Requests for Production of Documents
One of the main discovery tools is called a Request for Production of Documents.
This is where you ask the other side for:
• Technical information about their products
• Marketing materials
• Financial records
• Meeting minutes
• Information about foreign litigation
• Physical products related to the patent
• Emails and internal correspondence relevant to the claims
Requests for production are probably the core of discovery. They help you build your case.
Requests for Inspection
Sometimes, you need to physically inspect something that can’t be sent to you. That’s where Requests for Inspection come in. These are less common, but useful—say the allegedly infringing item is a boat. You can’t ask them to send it, but you can request to inspect it.
Interrogatories
Interrogatories are written questions you send to the other side. The attorney prepares responses, but they’ll get the answers from their client. These cover key factual issues in the case.
For example:
• If you’re the plaintiff, you might ask: “When did the defendant first become aware of the patent?” or “Identify all products sold that practice the patented invention.”
• If you’re the defendant, you might ask: “When was the invention conceived?” or “Identify any knowledge of prior art.”
Requests for Admission
Requests for Admission are questions where the other side must respond with admit, deny, or lack sufficient knowledge.
These help to narrow down the facts that are actually in dispute. For example:
• “Admit that you sold Product X on Amazon.”
• “Admit that you are the owner of Patent Y.”
• “Admit that the attached photo is a product you sold.”
• “Admit that your product has a curved base.”
You can even ask them to admit infringement, but they’ll almost certainly deny that—otherwise, the case wouldn’t be going to trial.
You can also ask things like: “Admit that you sold your product before January 1, 2020,” if that date is important for your case.
Depositions
Another major discovery tool is the deposition. This is oral testimony—anything you plan to ask at trial or need to know before trial, you ask in a deposition.
Depositions are usually done in person or by video (especially nowadays). You bring in people like the inventor, CEO, or other company representatives. You typically get about a day to question them.
If someone outside the lawsuit has useful information—like a company that bought the infringing product—you may need to subpoena them. This means you’re forcing a third party to provide information, or even sit for a deposition.
Expert Discovery
Expert discovery is another big part. You might bring in expert witnesses to offer technical or financial opinions.
For example:
• A damages expert might calculate how much you’re owed.
• A scientific expert might explain why the invention was obvious and should never have been patented in the first place.
Discovery Can Be Expensive
Discovery is expensive. There might be hundreds of thousands of pages to review. You may need to question multiple witnesses and pay experts for their time and analysis.
In many cases, the litigation costs can end up being more than the damages at stake. That’s why, even if you’re right, you might decide to settle early to avoid the fight.
I’m Adam Diament, and until next time, keep on inventing.