Responding to Interrogatories in Federal Litigation

© 2011 Frederic M. Douglas.   All Rights Reserved.

When responding to interrogatories propounded in federal litigation, take care to comply with federal rules, local rules, and good practices.  Another concern should always be responding well to further your position. 

Responses should be served on time.  Failure to serve objections in a timely manner can cause waiver of all objections.  You may elect to submit documents in lieu of responses if appropriate, as provided in Federal Rule of Civil Procedure 33(d).  Several litigants choose this option as a tactic believed to make responding easier.  Another idea is that such a document dump helps to frustrate the opponent.  However, the rules require that the documents responsive to the interrogatory be specified in detail to enable the opponent to locate and identify the responsive material.  If one follows the rules, there is not much ability to frustrate the opponent or make responding to the interrogatory less burdensome.

The maximum number of interrogatories propounded by a party is 25.  Often, a party forgets the limit and propounds more than 25 interrogatories in one set or cumulatively.  In such situations, responders often respond to only the first 25 interrogatories and then refuse to respond to the remained.  Some responders will even successfully refuse to respond to any interrogatories in a set that surpasses 25, even if the 26th interrogatory is not the first interrogatory in the instant set.

Take care to scrutinize the interrogatory and your response for typographical errors.  If the interrogatory is unintelligible, contradictory, or non-sensical, you may sufficiently respond to the interrogatory as provided.  As interrogatory responses may be held against a party, it would be unfortunate to find out at trial that a typographical error binds the party in the midst of trial.

Parties have an obligation to seasonably update interrogatory responses.  Avoid forgetting to update responses as you may be prevented at trial from bringing forth evidence that could have been responsive to the interrogatory but you failed to update the relevant response.  Additionally, you may even need the information updated as evidence to prove your case at trial.  Review interrogatory responses periodically to identify which responses should be updated and which responses are likely to need to be updated soon.  Frequently refer to your proof rubric and jury instructions to determine when you are missing needed evidence that should be disclosed.  

Frederic M. Douglas is an intellectual property attorney based in Irvine, California with clients all over the world.

fdouglas@cox.net

freddouglas.wordpress.com

Developing Interrogatories to a Patentee Plaintiff

© Frederic M. Douglas 2010.  All Rights Reserved.

Patent litigation is discovery-intensive.  However, the maximum number of interrogatories propounded is twenty-five unless you get court approval.  So ask efficiently.  Each case is different; there is no routine case.  In that direction, an accused infringer should consider the following topics for propounding interrogatories to a plaintiff patent owner.

(A) Which claims are being asserted?

       Most well-drafted patents contain several claims, each one potentially asserted by the patent owner.  The amount of discovery, expert analysis, and trial presentation is directly affected by the number of claims in dispute.

(B) Provide a claim chart

       Ask for an element-by-element analysis of the plaintiff’s infringement contentions, proposed claim construction and the intrinsic and extrinsic evidence supporting the proposed claim construction.  With this information, you can identify which claim constructions you can agree to, which ones to fight, and which ones you may need to introduce proactively.

(C) Is plaintiff alleging literal infringement and/or infringement under the doctrine of equivalents?

       Care should be taken here.  Especially, if the plaintiff is unsophisticated in patent litigation, you may not want to remind the plaintiff of the doctrine of equivalents.  If the plaintiff does not assert the doctrine of equivalents in a timely manner, the plaintiff may lose the opportunity to bring the doctrine of equivalents to trial. 

(D) Invention dates

       If the inventor invented after the publication of barring prior art, then the patent may be invalid.  You need to pin the patentee on the dates of conception and reduction to practice so that you don’t search for a moving target.  Ask the plaintiff to identify all witnesses and documents supporting their asserted dates of conception and reduction to practice.

(E)  Facts on willful infringement

       You need the plaintiff to identify the witnesses and documents supporting a claim for willful infringement, which risks the defendant paying up to triple damages.

(F) Plaintiff’s products/services

       Find out if the patentee plaintiff makes, uses, or sells any products or services that are the subject of the litigated patent.

(G) Patent marking

       There are usually no damages for the plaintiff if their own patented product is not marked with the relevant patent number.  This fact may be a significant issue when calculating damages.

(H) Prior Art

       Ask the patentee plaintiff to identify any prior art that was not provided to the patent office.

Frederic M. Douglas

fdouglas@cox.net

freddouglas.wordpress.com

Developing A Discovery Plan For A Patent Infringement Defendant

© Frederic M. Douglas 2010.  All Rights Reserved.

 (A) Review Jury Instructions and Prepare a Proof Rubric

       Determine what the plaintiff needs to prove and what the defendant would like to prove.  Prepare a list of documents and testimony needed to support your case and refute the plaintiff’s case.  From this list, you now know what type of evidence to gather.

 (B) Propound a First Set of Written Discovery Requests

       Ask questions to identify witnesses and to find out what documents exist.   Seek information on inventorship (conception and reduction to practice), prior art, patent prosecution, and persons knowledgeable about these topics.  Propound requests for admission to exclude factual issues for trial.  Propound a global request for documents early, as you undoubtedly will encounter resistance requiring efforts to pry documents from the plaintiff.

 (C) Depose the Patent Prosecutor

       In some jurisdictions, you may encounter resistance on deposing the patent prosecutor based on attorney-client privilege and the work product doctrine.  Deposing the patent prosecutor may be quite valuable to establish findings related to patentability defenses.

 (D) Depose the Patentee Plaintiff Under 30(B)(6) (If a Corporation)

       Depose the patent owner (inventor and/or assignee) as to bases for allegation of infringement, pre-filing investigation, allegations regarding accused products, and specific claims of the patent asserted.  Inquire as to conception and reduction to practice.  Determine which of defendant’s documents have been reviewed by plaintiff and which persons plaintiff consulted regarding infringement. 

 (E) Depose the Inventor(s)

       If the inventor is separate from the assignee, then depose the inventor early.  Inquire as to the same issues regarding the patentee plaintiff above.

 (F)  Depose the Plaintiff Under 30(B)(6) (If a Corporation)

       Seek corporate structure, identify and authenticate key documents, and find out about secondary witnesses.

 (G) Propound More Written Discovery Requests

       Now that you have some documents, identified witnesses, and information from the first set of written discovery and deposing the plaintiff, follow up with more requests and discovery from third parties.

 (H) Depose Third-Parties

       After propounding discovery upon third parties, get them in a deposition.  Authenticate documents, secure admissions needed; gauge how the witnesses will perform at trial.  Depose key witnesses after less important witnesses, so that the key witnesses will be locked-in to the version of the truth provided by the secondary witnesses.

 (I) Depose Key Witnesses

       Depose the witness on specific issues, such as validity, infringement, willful infringement, and other infringement defenses.  Review your proof rubric and shore up gaps in your evidence while reinforcing other evidence.

        (J) Prepare Follow-Up Requests For Admission

       Get necessary admissions nailed down.  Get the defendant to admit that at least some of the claim elements are found in the prior art.  Get admissions on the date of invention, contentions regarding prior inventorship, first sale of accused device, and other issues.

 (K) Depose Expert Witnesses

       Investigate the expert’s other testimony.  Read everything that you can find authored by the expert or about the expert.  Craft questions for which the only reasonable answer will be answers that help the defendant.  In essence, prepare to use the plaintiff’s expert to make admissions that help your case.

 (L) Propound Final Written Discovery Requests

       Review your proof rubric (which you should have been doing all along).  What are you missing?  Ask for it.

 Frederic M. Douglas

fdouglas@cox.net

freddouglas.wordpress.com

Developing A Discovery Plan For A Patentee Plaintiff

© Frederic M. Douglas 2010.  All Rights Reserved.

 (A) Review Jury Instructions and Prepare a Proof Rubric

       Determine what you need to prove and what the defendant needs to prove.  Prepare a list of documents and testimony needed to support your case and refute the defendant’s case.  From this list, you now know what type of evidence to gather.

 (B) Propound a First Set of Written Discovery Requests

       Ask questions to identify witnesses and to find out what documents exist.   Propound requests for admission to exclude factual issues for trial.  Propound a global request for documents early, as you undoubtedly will encounter resistance needing efforts to pry documents from the defendants.

 (C) Depose the Defendant Under 30(B)(6) (If a Corporation)

       Generally this is done first to identify key documents, corporate structure, and witnesses. 

 (D) Propound More Written Discovery Requests

       Now that you have some documents, identified witnesses, and information from the first set of written discovery and deposing the defendant, follow up with more requests and discovery from third parties.

 (E) Depose Third-Parties

       After propounding discovery upon third parties, get them in a deposition.  Authenticate documents, secure admissions needed; gauge how the witnesses will perform at trial.  Depose key witnesses after less important witnesses, so that the key witnesses will be locked-in to the version of the truth provided by the secondary witnesses.

 (F) Depose Defendant

       Identify who is the real party-in-interest.  Depose that person on specific issues, such as validity, infringement, willful infringement, and other infringement defenses.

  (G) Prepare Follow-Up Requests For Admission

       Get necessary admissions nailed down.  Get the defendant to admit that at least some of the claim elements are found in the accused device or service.  Get admissions on the notice date of infringement, contentions regarding prior inventorship, first sale of accused device, and other issues.

 (H) Depose Expert Witnesses

       Investigate the expert’s other testimony.  Read everything that you can find authored by the expert or about the expert.  Craft questions for which the only reasonable answer will be answers that help the plaintiff.  In essence, prepare to use the defendant’s expert to make admissions that help your case.

 (I) Propound Final Written Discovery Requests

       Review your proof rubric (which you should have been doing all along).  What are you missing?  Ask for it.

 Frederic M. Douglas

fdouglas@cox.net

freddouglas.wordpress.com

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