A patent holder can file an infringement suit against a defendant without knowing for sure if the defendant infringed on the patent holder’s rights. All the plaintiff needs is a strong suspicion that their patent is being infringed. In order to go to trial, the plaintiff and defendant must learn more about the other’s knowledge and actions. This information becomes evidence for both sides to use in their cases. The process of gathering these insights from the opposing side is called discovery, and it’s part of any civil litigation.
There are multiple methods of discovery, and all play a role in patent litigation. To determine whether or not a party is infringing on another’s patent, both sides may be interested in documents, facilities, expert opinions, or written answers to specific questions. This information is gathered using:
- Requests for Production (RFPs), also known as document requests.
- Requests for Inspection of manufacturing processes or facilities.
- Despositions, where fact and expert witnesses testify under oath.
- Written information, including interrogatories and Requests for Admission (RSAs).
All of these tactics play a role in building a case. In a nuanced legal situation, such as a patent infringement case, expert testimony from technical and financial authorities plays a large role.
Specific Challenges in Patent Litigation Discovery
Patent infringement cases deal with valuable technical information. The first challenge faced by patent holders and their legal teams is finding a balance between keeping restricted information as protected as possible and achieving fair access as required by discovery. Each type of discovery has its place in patent litigation. Deciding which methods of discovery to use, based on the amount of time they take and information they reveal, is also a challenge.
Discovery is an incredibly costly part of defending a patent. “According to the American Intellectual Property Law Association, the cost of an average patent lawsuit, where $1 million to $25 million is at risk, is $1.6 million through the end of discovery, and $2.8 million through final disposition.” These costs are primarily due to the amount of time it takes to determine what information to ask for and then sifting through the large volume of resulting documents and testimony. The entire process takes a specific skill set. This information is highly technical, adding to the time and expertise it requires to review.
The best way to reduce the challenges of discovery and other legal processes is to prioritize quality throughout the invention lifecycle. Identifying white space within the landscape and ensuring novelty from the beginning can minimize risk and the associated costs for decades.