For companies involved in patent infringement litigation and their counsel, fact discovery is often the most challenging and expensive phase of the case. Fact discovery can be even more difficult where:

These and other challenges make it critical for companies and their counsel to develop a fact discovery strategy that will maximize the chances of success on the merits while controlling the cost associated with conducting thorough fact discovery on the parties' claims and defenses.

This Update provides companies and their counsel with:

For more information on these topics, including a complete list of Practical Law's patent litigation discovery resources, see Patent Litigation Discovery Toolkit.

As in most complex federal litigations, the primary tools for obtaining fact discovery in patent infringement litigation are:

In-house counsel should be aware that it is typically necessary for the parties to use each of these discovery tools to gather information relevant to the parties' claims and defenses. Outside counsel should consult with the client when developing a discovery strategy so that the client knows when it may be required to respond to each type of discovery request.

Early in the case, the parties can minimize the expense and impact to their businesses by negotiating and requesting clear requirements and deadlines for the litigation during the Federal Rule of Civil Procedure (FRCP) 26(f) discovery planning conference and the FRCP 16 scheduling conference. For more information on these proceedings, see Practice Note, Patent Litigation: Initial Scheduling Conference and Discovery Planning.

Once discovery starts, the specific information sought depends on whether the requesting party is the patent owner or accused infringer. For example, patent owners typically seek discovery from the accused infringer relating to:

Accused infringers typically seek discovery from the patent owner relating to:

In-house counsel can minimize the impact of litigation on their business by identifying the sources and location of discoverable information early in the litigation and communicating with relevant employees about their possible involvement in the case. Early preparation and ongoing coordination with employees and outside counsel will help outside counsel comply with the case budget requirements and may help limit the number of discovery disputes as the litigation proceeds.

For more information on fact discovery in patent litigation generally, including the timing and sequence of fact discovery, see Practice Note, Patent Litigation: Fact Discovery Considerations.

Counsel should be prepared to start formal discovery immediately after the FRCP 26(f) conference. Practical Law's model patent litigation discovery documents can help counsel draft the necessary requests efficiently and are separately tailored for patent owners and accused infringers.

For model discovery requests that a patent owner's counsel can use when seeking discovery from an accused infringer, see Standard Documents:

For model discovery requests that an accused infringer's counsel can use when seeking discovery from a patent owner, see Standard Documents:

For more model discovery documents, including a confidentiality agreement, objections and responses to discovery requests and documents for patent litigation arising under the Hatch-Waxman Act, see Patent Litigation Discovery Toolkit.