The following article appears in the journal JOM,
42 (8) (1990), p. 62.

JOM is a publication of The Minerals, Metals & Materials Society

Getting "Just the Facts" in Patent Infringement Litigation

Richard V. Westerhoff

Those of us with long memories may recall the weekly catch-phrase of Dragnet's Sergeant Joe Friday, the no-nonsense television detective of the 1950s and '60s—"just the facts, ma'am." Getting the facts is critically important in litigation also, especially in complex cases such as patent infringement suits. While the informal gathering of facts, even including the use of civilian counterparts to Sergeant Friday, is useful, there is a formal procedure for acquiring, from one's adversary and others, information which might not otherwise be available.

This formal procedure for providing access to information during litigation is known as discovery. Prior to implementation of current discovery procedures, surprise was a favorite tool in the arsenal of the crafty trial lawyer. Such an approach was commonly referred to as "trial by ambush." The purpose of modern discovery, in the words of the U.S. Supreme Court, is to "make trial less a game of blind man's bluff and more a fair contest with basic issues and facts disclosed to the fullest practical extent."

Access to the facts not only levels the playing field, but is useful in defining and narrowing the issues to be tried, which, when realistically evaluated, can often lead to an informal, equitable settlement instead of a long, costly trial.

The range of information that can be gathered through discovery is very broad. It is not limited to evidence that could be used at trial, but extends to anything which could lead to discovery of such evidence. Because patent infringement suits are under the jurisdiction of the federal courts, discovery is governed by uniform rules which apply in all civil cases in federal courts, although each trial court has its own local rules. For the most part, these local rules standardize form and attempt to curtail abuse of discovery.

The basic tools of discovery in federal courts are: written interrogatories, depositions, requests for production and requests for admissions. Written interrogatories are questions which must be answered in writing by the adversary under oath. While such interrogatories are a very important tool for discovery, the other party has time to formulate an answer with the assistance of counsel. Oral depositions, on the other hand, where a witness is asked questions under oath in the presence of a stenographer, elicit more spontaneous responses, but may not provide full information. Depositions may also be taken by written interrogatory and, thus have the same limitations as general interrogatories. Requests for production permit an examination of documents and other physical things, such as, for instance, an examination of a machine or a process line, or the production of things for testing. Requests for admissions are statements of undisputed facts to which the other side is requested to agree. Each of these tools of discovery has its strengths and weaknesses, and should therefore be appropriately combined for the particular circumstances.

Discovery may not only be used to obtain information from an adversary, but also from persons and companies not involved in the dispute. For instance, often others may have been using de vices or techniques prior to a patentee's invention, or may have knowledge of the patentee's activities prior to filing a patent application, either of which could invalidate or restrict the scope of the patent in suit. On the other hand, the third party may have information relevant to infringement by the defendant. Persons not party to the suit may be compelled, as by subpoena, to provide information. Of course, it is usually best to obtain the cooperation of the third party, if possible, which may involve, for instance, precisely limiting the information requested. Any person from whom discovery is sought, including parties to the suit, can ask a court to dismiss unreasonable or ill founded requests for discovery. Alternatively, they may obtain protective orders limiting disclosure and use of confidential information.

Discovery cannot be used to obtain information which is subject to attorney-client privilege, that is, information which is confided to one's attorney in connection with the giving of legal advice. In addition, the attorney's trial preparation materials, known as attorney work product, are, in general, not discoverable. Assertions of such exclusions, however, can be challenged.

Information obtained through discovery is useful in determining what the other side's case is in the litigation. For instance, it is common for litigants in patent suits to engage expert witnesses to testify on technical issues. Discovery can be used to identify the experts, determine their qualifications, review any tests performed by them and scrutinize their theories and conclusions.

Discovery is also useful in committing the other side to a set of facts. If facts presented at the trial differ from the sworn answers to interrogatories or testimony given in depositions, the party's credibility is open to attack. For the most part, deposition testimony given by a party, or one who speaks for the party, may be used for any purpose at a later trial. Deposition testimony of a person who has since died or cannot be compelled to appear can also be used at the trial.

Discovery as a means of gathering information in litigation is effective because there are sanctions for those who do not comply or abuse the process. The most serious sanction, dismissal of the suit or default in favor of the other side, is rarely applied. Also, while courts can hold a party, or its counsel, in contempt for discovery infractions, they are reluctant to do so. However, lesser sanctions such as barring evidence, restricting additional discovery, holding facts as established and assessing costs to the other side of compelling discovery, including attorney's fees, are regularly used by courts.

Full knowledge of the relevant facts is necessary in developing a realistic appraisal of one's case in patent infringement litigation. Discovery, when properly used, is one effective tool for gathering those facts.

Richard V. Westerhoff is an attorney in the law firm Eckert Seamans Cherin & Mellott, 600 Grant Street, 42nd Floor, Pittsburgh, PA 15219; telephone (412) 566-6000; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.

Copyright © 1990 by The Minerals, Metals & Materials Society.

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