discovery2018-09-20T14:54:00+00:00


4.  Lawsuit Discovery - Getting The Evidence


Discovery


Discovery refers to the formal procedures used by the parties to learn information and collect evidence. Absent special circumstances, discovery cannot begin before the parties have had their early meeting (discussed above).


The very first discovery that the parties typically exchange is called “initial disclosures”. The discovery rules mandate that the parties give each other certain information about the case without having to be asked. This information includes such things as the names and addresses of known witnesses, the identity and location of documents, a calculation of any damages being claimed, and a copy of insurance policies that might apply. The initial disclosures are due 14 days after the early meeting.


Other than the initial disclosures, the parties will need to seek out information and evidence using the other discovery tools that are available. In patent cases these tools generally consist of:


1. Document Requests
2. Interrogatories
3. Depositions
4. Requests For Admission


A brief description of each of these discovery tools follows.

Document Requests


A request for documents and things allows a party to ask the other party to produce for inspection and copying documents and things in the other party’s possession, custody, or control that are relevant to the issues in the lawsuit. For example, a patent owner may ask an accused infringer to produce documents that show what parts go into an accused product and how it is made. Similarly, for example, an accused infringer may ask the patent owner for all documents that evidence the conception and reduction to practice of the claimed invention (e.g. the inventor’s notebook).


It is not uncommon for patent cases to involve the discovery and exchange of many thousands of documents, and the expense can be many thousands of dollars. First there is the expense of responding in writing to the document requests. A party who receives a document request must respond in writing within 30 days as to whether they object to the requests or will produce documents. This involves an attorney reviewing each document request (there can be dozens of such requests) and formulating a written response to each one. Then there must be a search by the party for potentially responsive documents in the party’s possession, custody, or control. The documents that are located must then be reviewed, labeled, logged, copied and produced to the other side. If there are many documents involved this whole process can take hundreds or thousands of man hours.


Of course, for the receiving party it must review all of the documents that have been produced to find the information it is looking for. It is not uncommon to have to enormous amounts of time reviewing and organizing documents to find necessary information, or just as importantly find out that what has been asked for was not produced.


Interrogatories


Another way that parties can discover information from one another is through propounding written interrogatories. An interrogatory is a question that must be objected to, or answered under oath, in writing by the other side within roughly 30 days of receiving it. By default each side is only allowed under the rules a limited number (25). If a side wants more it must get permission from the court unless the other side doesn’t object. Interrogatories can only be propounded to parties in the lawsuit, and not to third parties.


An example of a typical interrogatory that might be propounded to a patent owner in a patent infringement lawsuit is as follows:


INTERROGATORY 1:  Identify all disclosures by you of the claimed invention prior to the patent application filing date.


Collecting the necessary information to answer an interrogatory, such as the one above, can be a very time consuming, expensive, and tedious process. For example, imagine if the patent owner had been actively promoting and selling the invention during the eight months preceding the filing of his patent application, had published advertisements in dozens of newspapers and magazines, attended 4 different trade shows, made hundreds of sales, and had spoken to hundreds of people about buying the invention. It could considerable work and expense to collect all of the requested information.


From the patent owner’s perspective much of the requested information may seem irrelevant, and an objection might be given in response to the interrogatory. However, the defendant may have reasonable arguments for why it needs the information, and if agreement cannot be reached then the parties may end up going to court to have a judge decide the matter.


Depositions


A deposition is the taking of sworn testimony outside of court. It usually happens in the conference room of a lawyer’s office. The same thing that happens in court when a witness testifies at trial also happens in a deposition, except that there is no judge or jury present.


In particular, a court reporter administers to the witness an oath to tell the truth. Then the attorney for the party who initiated the deposition asks the witness questions during what is called a “direct examination”. The court reporter records all of the questions and answers just as would happen in court. Once the initiating attorney is done asking questions, the attorneys for the other parties who are present may then ask the witness questions in what is called a cross-examination. After all of the parties have had a chance to ask questions the deposition ends. The court reporter will then prepare a transcript of the deposition. The transcript can be used in court as evidence. It is also increasingly common to videotape depositions, since judges and juries often have an easier time watching someone testify at a deposition, where they can see the demeanor of a witness, rather then simply listening to the transcript read to them.


Intellectual property infringement lawsuits often involve the taking of many depositions by both sides. Depositions are usually very expensive. The expenses involved with a deposition include paying the court reporter and videographer fees, facility fees, witness fees, attorney fees, and frequently travel expenses. A deposition will usually last an entire day. However, it is not uncommon for an attorney to need to spend several days preparing to take a deposition. This involves reviewing many documents, choosing documents to use as exhibits at the deposition, and preparing questions. When all is said and done a single deposition can cost the party taking it many thousands of dollars. In some large and complex intellectual property infringement cases parties can spend hundreds of thousands of dollars on just taking and defending depositions.


Requests For Admission


A party may propound in writing to another party in a lawsuit a request to admit the truth or authenticity of something. The party who receives the request for admission has thirty days to respond to the request. Requests for admission are used to help narrow the issues so that the parties, and the court, can focus their time and energy on matters that are genuinely disputed. They are frequently used to establish the authenticity of documents that the parties plan to use at trial, or to establish certain facts.


For example, in a patent infringement lawsuit, a competitor accused of infringement might propound the following request:


REQUEST FOR ADMISSION 1:  Admit that the invention of claim 1 of the asserted patent was on sale by you more than one year before the patent application was filed.


The competitor might propound such a request in an effort to establish that claim 1 of the asserted patent is invalid.


The recipient of a request for admission cannot simply say they do not know whether something is true or not without having made a reasonable inquiry into the facts. So, with regards to the above request for admission, an inquiry would probably need to be made of the inventor and/or patent owner to determine whether there had been a sale of the invention of claim 1 more than one year before the patent application filing date. The failure to truthfully answer a request for admission can result in a party being sanctioned by the court.

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4.  Lawsuit Discovery - Getting The Evidence


Discovery


Discovery refers to the formal procedures used by the parties to learn information and collect evidence. Absent special circumstances, discovery cannot begin before the parties have had their early meeting (discussed above).


The very first discovery that the parties typically exchange is called “initial disclosures”. The discovery rules mandate that the parties give each other certain information about the case without having to be asked. This information includes such things as the names and addresses of known witnesses, the identity and location of documents, a calculation of any damages being claimed, and a copy of insurance policies that might apply. The initial disclosures are due 14 days after the early meeting.


Other than the initial disclosures, the parties will need to seek out information and evidence using the other discovery tools that are available. In patent cases these tools generally consist of:


1. Document Requests
2. Interrogatories
3. Depositions
4. Requests For Admission


A brief description of each of these discovery tools follows.

Document Requests


A request for documents and things allows a party to ask the other party to produce for inspection and copying documents and things in the other party’s possession, custody, or control that are relevant to the issues in the lawsuit. For example, a patent owner may ask an accused infringer to produce documents that show what parts go into an accused product and how it is made. Similarly, for example, an accused infringer may ask the patent owner for all documents that evidence the conception and reduction to practice of the claimed invention (e.g. the inventor’s notebook).


It is not uncommon for patent cases to involve the discovery and exchange of many thousands of documents, and the expense can be many thousands of dollars. First there is the expense of responding in writing to the document requests. A party who receives a document request must respond in writing within 30 days as to whether they object to the requests or will produce documents. This involves an attorney reviewing each document request (there can be dozens of such requests) and formulating a written response to each one. Then there must be a search by the party for potentially responsive documents in the party’s possession, custody, or control. The documents that are located must then be reviewed, labeled, logged, copied and produced to the other side. If there are many documents involved this whole process can take hundreds or thousands of man hours.


Of course, for the receiving party it must review all of the documents that have been produced to find the information it is looking for. It is not uncommon to have to enormous amounts of time reviewing and organizing documents to find necessary information, or just as importantly find out that what has been asked for was not produced.


Interrogatories


Another way that parties can discover information from one another is through propounding written interrogatories. An interrogatory is a question that must be objected to, or answered under oath, in writing by the other side within roughly 30 days of receiving it. By default each side is only allowed under the rules a limited number (25). If a side wants more it must get permission from the court unless the other side doesn’t object. Interrogatories can only be propounded to parties in the lawsuit, and not to third parties.


An example of a typical interrogatory that might be propounded to a patent owner in a patent infringement lawsuit is as follows:


INTERROGATORY 1:  Identify all disclosures by you of the claimed invention prior to the patent application filing date.


Collecting the necessary information to answer an interrogatory, such as the one above, can be a very time consuming, expensive, and tedious process. For example, imagine if the patent owner had been actively promoting and selling the invention during the eight months preceding the filing of his patent application, had published advertisements in dozens of newspapers and magazines, attended 4 different trade shows, made hundreds of sales, and had spoken to hundreds of people about buying the invention. It could considerable work and expense to collect all of the requested information.


From the patent owner’s perspective much of the requested information may seem irrelevant, and an objection might be given in response to the interrogatory. However, the defendant may have reasonable arguments for why it needs the information, and if agreement cannot be reached then the parties may end up going to court to have a judge decide the matter.


Depositions


A deposition is the taking of sworn testimony outside of court. It usually happens in the conference room of a lawyer’s office. The same thing that happens in court when a witness testifies at trial also happens in a deposition, except that there is no judge or jury present.


In particular, a court reporter administers to the witness an oath to tell the truth. Then the attorney for the party who initiated the deposition asks the witness questions during what is called a “direct examination”. The court reporter records all of the questions and answers just as would happen in court. Once the initiating attorney is done asking questions, the attorneys for the other parties who are present may then ask the witness questions in what is called a cross-examination. After all of the parties have had a chance to ask questions the deposition ends. The court reporter will then prepare a transcript of the deposition. The transcript can be used in court as evidence. It is also increasingly common to videotape depositions, since judges and juries often have an easier time watching someone testify at a deposition, where they can see the demeanor of a witness, rather then simply listening to the transcript read to them.


Intellectual property infringement lawsuits often involve the taking of many depositions by both sides. Depositions are usually very expensive. The expenses involved with a deposition include paying the court reporter and videographer fees, facility fees, witness fees, attorney fees, and frequently travel expenses. A deposition will usually last an entire day. However, it is not uncommon for an attorney to need to spend several days preparing to take a deposition. This involves reviewing many documents, choosing documents to use as exhibits at the deposition, and preparing questions. When all is said and done a single deposition can cost the party taking it many thousands of dollars. In some large and complex intellectual property infringement cases parties can spend hundreds of thousands of dollars on just taking and defending depositions.


Requests For Admission


A party may propound in writing to another party in a lawsuit a request to admit the truth or authenticity of something. The party who receives the request for admission has thirty days to respond to the request. Requests for admission are used to help narrow the issues so that the parties, and the court, can focus their time and energy on matters that are genuinely disputed. They are frequently used to establish the authenticity of documents that the parties plan to use at trial, or to establish certain facts.


For example, in a patent infringement lawsuit, a competitor accused of infringement might propound the following request:


REQUEST FOR ADMISSION 1:  Admit that the invention of claim 1 of the asserted patent was on sale by you more than one year before the patent application was filed.


The competitor might propound such a request in an effort to establish that claim 1 of the asserted patent is invalid.


The recipient of a request for admission cannot simply say they do not know whether something is true or not without having made a reasonable inquiry into the facts. So, with regards to the above request for admission, an inquiry would probably need to be made of the inventor and/or patent owner to determine whether there had been a sale of the invention of claim 1 more than one year before the patent application filing date. The failure to truthfully answer a request for admission can result in a party being sanctioned by the court.

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