Litigating Patent Infringement Cases in the Rocket Docket - Pre-Filing Concerns for the Plaintiff-Patentee
By Dabney Carr and Robert Angle
As we noted in an earlier post, we will blog about several issues that space did not allow us to address in depth in our recent article, found here, on patent litigation in the Eastern District of Virginia. As our first follow-up post, we want to talk about some of the pre-filing concerns faced by a patentee planning to file an infringement suit in the EDVA.
The docket speed of the EDVA is a two-edged sword for the plaintiff-patentee. On the one hand, getting to trial in less than a year allows a patentee to enforce its rights swiftly. On the other hand, the court's system of randomly assigning patent cases to the three divisions creates some uncertainties (the differences between divisions and judges is discussed in more depth in the article). In addition, the fast schedule requires the plaintiff-patentee to do more pre-filing "due diligence" because there is no time to conduct a fact investigation during discovery. Among the tasks a plaintiff-patentee should complete before filing suit are:
- Issue a litigation hold letter to/within the client -- This is a basic requirement of modern federal court litigation, but is all the more important in the EDVA's speedy docket. The well-known Infineon v. Rambus saga shows the dangers of ignoring (or flaunting) ediscovery obligations.
- Investigate the patent - Obviously, an attorney representing a plaintiff-patentee must carefully review the patent and the file history and look at any potentially invalidating prior art that the defendant might assert. In the EDVA, the potential plaintiff should go beyond these basic steps to craft well-developed claim construction and infringement positions before suit is filed.
- Retain an Expert and Develop an Infringement Theory - Again, it's obvious that a plaintiff-patentee must be able to articulate its infringement theory before filing suit. It is strongly recommended, that the EDVA plaintiff go farther and have its infringement expert perform an infringement analysis before suit is filed. That analysis will guide everything - from identifying potential defendants, to claim construction and discovery requests - and will become the basis of the expert's report.
- Investigate the Accused Product - As in any case, a plaintiff-patentee should find out everything it can about the accused products from publicly available information before filing suit. Counsel should take full advantage of its client, who often has the most knowledge of the industry and its competitor's products. Even where technical information or the accused products themselves are not readily available in the market, the plaintiff-patentee must use what information it does have to clearly understand the non-public technical information it needs so that it can seek that information -- either from the defendant or third parties -- as soon as suit is filed.
- Investigate Damages - Like all plaintifffs, a patent infringement plaintiff must always weigh the costs of litigation against the potential recovery. The EDVA's speed compacts the costs of litigation and inevitably increases them. Before filing suit, the plaintiff-patentee must make at least a rough estimate of the potential damages to make sure that the fight is worth the cost.
- Gather Your Documents - Staying ahead of discovery deadlines is crucial in patent litigation in the EDVA. The plaintiff-patentee is well-positioned to do this because it can gather its documents before filing suit, when document collection and review can be done on a longer timeline, putting less pressure on the client. It also allows counsel to fully understand its client's documents before suit begins, heads off potential discovery motions and puts pressure on the defendant to move just as quickly.
- Serve Discovery as Soon as Possible - Many of the pretrial orders in the EDVA permit the parties to begin discovery as soon as a Rule 26(f) conference is held, even before the inital scheduling conference. A plaintiff should have its interrogatories, including interrogatories seeking claim construction positions, non-infringement contentions and the basis for affirmative defenses, ready to serve as soon as it is allowed. A plaintiff should request the most important information up front and focus its discovery requests by seeking "documents sufficient to show" requested information. Such requests both preclude claims of overbreadth and prevent a defendant from attempting to overwhelm the plaintiff with large amounts of irrelevant or tangential information.
The moral of the story for the plaintiff-patentee is "prepare as much as you can before filing suit." The more prepared the plaintiff-patentee is, the more it will be able to take advantage of the EDVA's "rocket docket."
Next time …. How the Defendant-Accused Infringer should respond to a new lawsuit to avoid putting itself behind the EDVA eight ball and even turn the tide in its favor.
