Streamlining Patent Litigation Through Non-Statutory Tools

Fueled by high financial stakes and the specter of injunctions, patent litigation is incredibly complex, expensive and can involve protracted battles at every step of the process. Consequently, it can be important to understand the tools available to streamline and economize pending or expected patent litigation. With recent attention focused on statutory patent reform, it is important not to overlook the host of emerging non-statutory proposals that have been advanced by courts, bar organizations, and individual judges for making patent litigation more efficient. Importantly, because courts have the inherent power to control their dockets these recommendations and variants thereof can be used in any jurisdiction, provided counsel can present cogent grounds for their adoption.1 Following this article is a check-list highlighting some of the tools recommended for making patent litigation more efficient.

Discovery Reform

While discovery can be an arduous process, particularly when working with expansive electronic records, there are many tools for streamlining the discovery process in patent litigation.

Initial Disclosures

One important tool is the early disclosure of critical information, which is often accomplished through local patent rules2 and is also encouraged by the Patent Damages Committee.3 For example, a patentee can be required to disclose all documentation related to the development of the invention, the prosecution history, ownership and sales of the patented invention.4 On the other hand, the accused infringer can be required to provide documentation related to the operation and construction of the accused product/method and copies or a description of all known prior art.5 Each party can also be required to provide documents related damages, covering license agreements, royalty rates and sales information for the invention and the accused product(s).6 Requiring parties to produce evidence on all of these grounds is intended to focus the issues early and help eliminate unfair surprise later in the case.

Contention Disclosures

By mandating the prompt disclosure of the specific bases for claims and defenses, local patent rules and the Sedona Conference have advocated requiring parties to "crystallize their theories" and "adhere to those theories" throughout the case.7 Patentees' disclosures can include at least the asserted claims, the type(s) of alleged infringement, the accused products, a claim chart and any basis for willful infringement.8 Conversely, the accused infringer must provide its own claim charts for non-infringement and invalidity, each piece of prior art and explanations for any grounds of invalidity or unenforceability.9 Typically, contentions cannot be amended absent a showing of good cause.10

Electronically Stored Information Conferences

The large volume of electronically stored information ("ESI") and the associated expenses of dealing with it has become a significant cost issue in patent cases. To help address this, the Seventh Circuit Electronic Discovery Program requires parties to meet early in the case to discuss sources of discovery and establish the scope of preservation, narrowing the contentious issues and allowing prompt attention by the court to problem areas.11 Two district courts have enacted their own e-discovery programs that urge or require similar meetings.12 The Seventh Circuit program also requires parties to designate an "e-discovery liaison" who is typically an employee of the party that has access to the party's electronic systems, has knowledge of those systems as well as the technical aspects of electronic discovery, and is aware of the party's electronic discovery efforts.13 Use of a liaison can be an important tool to help parties craft a discovery plan that is based on technological feasibility and economy.

Protective Orders

Because parties in patent disputes are often direct competitors, broad protective orders are commonplace in patent cases.14 The Patent Damages Committee observes that these orders often need to be imposed as early in the case as possible to avoid delays in discovery and should be...