• Litigating Patent Infringement Cases in the Rocket Docket -- How the Defendant-Accused Infringer Should Respond
  • September 2, 2010 | Author: Robert A. Angle
  • Law Firm: Troutman Sanders LLP - Richmond Office
  • This is the second in a series of posts following up on our recent article on patent litigation in the Eastern District of Virginia (found here). In this post, we talk about how the defendant-accused infringer should respond to a lawsuit to avoid putting itself behind the EDVA eight ball and turn the tide in its favor.

    As we discussed in our first post, the docket speed of the EDVA provides a plaintiff-patentee with a number of advantages. However, if a defendant acts quickly, it can overcome these advantages and even gain an edge. In the EDVA perhaps more than any other jurisdiction, time is a very precious commodity. By far the most important advice we can give to the defendant accused of patent infringement is that it must not squander the time period after it receives the Complaint. As soon as a defendant learns it has been sued, it must act immediately. All too often, this is difficult for the defendant-accused infringer to appreciate fully, and weeks go by while the defendant does very little, perhaps waiting to be served or assuming that it will get a significant extension of time to file responsive pleadings. This is a costly mistake. While the defendant may obtain a short extension of time to respond -- rarely more than a few weeks -- the time wasted can never be recovered.

    As soon as a defendant receives notice of the suit, it must do several things, such as issue a litigation hold letter, investigate the asserted patent(s), identify the accused product(s), and prepare a response to the Complaint.   In addition to these obvious steps, a defendant-accused infringer should also do the following:

    • Gather Your Documents Early - Staying ahead of discovery deadlines is crucial in patent litigation in the EDVA. The defendant-accused infringer can count on receiving very broad document requests as soon as discovery begins. Too often, defendant-accused infringers wait until the requests are received and immediately fall behind in document collection, review and production. To avoid this, defendant-accused infringers must identify and begin collecting potentially relevant documents even before discovery begins. This will allow them to hit the ground running on discovery and head off potential discovery motions. Rather than getting bogged down, the well-prepared defendant can go on the offensive and focus on propounding discovery to the plaintiff-patentee and seeking third-party discovery.

    • Retain technical/subject matter expert(s) and develop a non-infringement and/or invalidity theory - Sooner or later, defendants are almost always going to need a technical expert (or two), and sooner is much better than later in the EDVA. If retained early, the expert(s) can identify and articulate non-infringement and/or invalidity theories, thus helping to shape the defense and discovery strategy from the very beginning. All too often, technical experts are retained relatively late in the game, after discovery has been propounded and the parties positions have taken shape, which really limits their effectiveness.

    • Push for Production of Infringement Contentions- The plaintiff-patentee is supposed to have the basis for its infringement contentions before it even files suit. Frequently, however, plaintiff-patentees attempt to withhold infringement contentions for as long as possible and sometimes even claim that they cannot provide such contentions until obtaining discovery. For the defendant-accused infringer, the infringement contentions drive many aspects of the case and so should be pursued relentlessly from the outset litigation. The defendant-accused infringer should serve contention interrogatories as soon as it is permitted and should press for the early production of infringement contentions during any Rule 26(f) and/or Rule 16(b) conferences.

    • Offer to produce a technical documents and witness(es) on the accused product(s) as soon as possible - Plaintiff-patentees often claim an inability to provide infringement contentions until after discovery because they “don’t fully understand” the accused products. To defeat this objection, accused infringers should offer to produce technical documents and one or more witnesses with technical knowledge of the accused product as early as possible. There is little downside to this -- the documents and witness(es) will have to be produced in discovery anyway -- and significant upside -- forcing the early production of infringement contentions and perhaps catching the plaintiff-patentee flat-footed and demonstrating your responsiveness to the Court.

    At bottom, the defendant-accused infringer has no time to waste after getting sued in the EDVA and must be proactive to avoid getting behind the EDVA eight ball. By taking the forgoing steps the defendant-accused infringer can avoid some of the pitfalls of the EDVA and even turn the rocket docket speed into an advantage.

    Next time ... . Managing Discovery in the EDVA.