Answer ... Discovery is available during patent litigation at the court’s discretion pursuant to Rule 26 of the Federal Rules of Civil Procedure (FRCP). A court has broad discretion to manage the discovery process in a patent dispute (Univ of W Virginia Bd of Trustees v VanVoorhies, 278 F3d 1288, 1304 (Fed Cir 2002)).
Answer ... Generally, fact discovery and expert discovery are available in a patent dispute. Fact discovery can include:
- requests for responses to written interrogatories and requests for admission;
- the production of relevant documents and other physical objects;
- the inspection of facilities; and
- the testimony of fact witnesses through depositions.
Expert discovery includes obtaining the identity of any expert witness a party may rely on at trial, a written report from any expert witness who is retained to provide expert testimony and deposition testimony of any expert witness whose opinions may be presented at trial (FRCP Rule 26(a)(2)).
Answer ... FRCP Rule 26 governs the limits on the amount of discovery in a patent dispute. Discovery is limited to any non-privileged matter that is relevant to any party’s claim or defence and proportional to the needs of the case, considering the following factors:
- the importance of the issues at stake in the action;
- the amount in controversy;
- the parties’ relative access to relevant information;
- the parties’ resources;
- the importance of the discovery in resolving the issues; and
- whether the burden or expense of the proposed discovery outweighs its likely benefit.
Federal Circuit law applies to determine whether the requested discovery is relevant to a party’s claim or defence bearing on substantive patent law issues, such as infringement, validity and unenforceability (Advanced Cardiovascular Sys, Inc v Medtronic, Inc, 265 F3d 1294, 1307-08 (Fed Cir 2001)).
In addition, a court may further limit the frequency or extent of discovery if it determines that:
- the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome or less expensive;
- the party seeking discovery has had ample opportunity to obtain the information by discovery in the action; or
- the proposed discovery is outside the scope permitted by FRCP Rule 26(b)(1).