Defending the Patent Case: Self-Help Discovery

The discovery rules in federal litigation provide a powerful mechanism for obtaining evidence necessary to defend against claims of patent infringement.  However, anyone who has been through the process knows that it can be very difficult and contentious, especially when the stakes are high and/or you are dealing with an uncooperative adversary.

 As an adjunct to the discovery process, it pays to pursue other avenues for obtaining helpful evidence.  Some of this may seem familiar to the seasoned patent litigator, but for those who are new to the process, it may not be.  So, here are some strategies that I have used with success in the past.

1)      Obtain the file histories of the patents-in-suit ASAP

There is no need to wait for your adversary to produce file histories.  More recent ones can be obtained from the US Patent & Trademark Office’s PAIR system. If not, there are several services that can obtain and quickly provide electronic copies of file histories.  I’ve used Landon & Stark in the past, but there are others. 

Make sure to get the file histories for any applications to which the patents-in-suit claim priority. The amendments and arguments in the parent prosecution histories may provide good claim construction evidence.

2)      Use PACER to look for related cases and documents

If the patent holder has filed other lawsuits, especially on the patent asserted against your client, you will want to review what happened and what positions the patent holder took in those cases.  The PACER system allows you to search the records of federal cases nationwide and to obtain copies of documents filed by the parties.  PACER can provide a treasure trove of useful information.

3)      Check the assignment records

In order to file a patent infringement suit, the plaintiff must own or exclusively license the patent-in-suit.  Patent holders typically record ownership transfers with the U.S. Patent and Trademark Office.  The assignment records may indicate a possible defect in title which you can exploit to establish that the plaintiff lacks standing to sue for patent infringement.  Recorded assignments can be searched on the USPTO’s “Assignments on the Web” page.

 4)      Figure out if there are foreign equivalent applications/patents

Many companies seek patent protection around the world.  As a result, the U.S. patent asserted against your client may have counterparts in other countries.  The examiners in those countries may have found prior art that the U.S. Patent & Trademark Office was unaware of.  Also, the examiners may have found problems with the written description that the U.S. examiners did not pick up on.  While the standards for patentability and written description sufficiency will differ in other countries, the views of foreign examiners may provide you with ideas about how to invalidate your adversary’s claims under U.S. law.

I use the German Patent Office’s website to look for foreign counterparts.  It is free, and in my experience it is comprehensive and reliable.  The English interface can be found here.  Just click on the “search” tab in the upper left hand corner and then type in USXXXXXXX (where XXXXXXX is the patent number) in the publication box.  In the “results” box that comes up, select “search” under the “Patent family search” column to see what foreign equivalents exist.

In the case of European patents/applications (publications beginning with “EP”) or Patent Cooperation Treaty applications (publications beginning with a WO), you can dig deeper.  With a PCT application, there will generally be an International Search Report (“ISR”) and a Written Opinion (sometimes the Written Opinion is not publicly available).  The ISR will contain search results obtained by the International Search Authority (“ISA”).  Sometimes, the US Patent & Trademark Office is the ISA, in which case the search results may not differ from those in the U.S. patent.  However, there are other search authorities, and they may have found different prior art. 

The German Patent Office website will list ISRs as part of the patent family.  They are listed with the PCT application number and an “A3” suffix.  PCT applications are administered by the World Intellectual Property Office (“WIPO”) which has its own website.  You can use the search function to locate PCT applications of interest.  Once you click on the results, an entry for the application will appear with several tabs.  The “documents” tab will include the publicly available filings for the application and should have the ISR and Written Opinion.

The European Patent Office (“EPO”) also provides on-line file histories through the “European Patent Register.”  Type in the European patent application or publication number and you will be taken to a screen with bibliographic information about the application. Click on the “all documents” tab on the left, and you will be given a list of the documents that can be retrieved which is similar to that in the USPTO PAIR system.

 5)      Look at the patent holder’s trademark filings

 The patent holder’s commercial embodiments may be relevant to damages, secondary considerations of non-obviousness, and invalidity under the on-sale or public use bars of the Patent Statute.  You may find that the patent holder sought to or registered a trademark for a commercial embodiment.  The trademark file history will usually include the date on which the mark was first used in commerce in the United States, which could reveal that the product was sold or publicly used early enough to invalidate the patent claims.  You can search for marks applied for by a particular company by using the TESS system which is accessible from the USPTO home page.  Once you find a mark of interest, you can pull its file history by using the TSDR system (which is also accessible from the home page).  For trademark applications that are “use based,” the date of first use will be included with the application. For “intent to use” applications, there will be a “Statement of Use” or an “Amendment to Allege Use” that includes the first use date.  Even if the dates of use do not establish invalidity, a trademark search will reveal the product names for the commercial embodiments, which will help you focus your discovery requests.

 6)      Look at the Patent Holder’s Website

The patent holder’s website may describe the claimed technology or commercial embodiments of the patent-in-suit.  This will help you identify the product names for conducting additional research for use in your discovery requests. 

 Publicly traded companies often provide access to their SEC filings on their websites.  10-K reports can provide valuable information about the structure of the company and how the company views its competition (which may include your client).  They also describe on-going litigation which may provide further avenues for discovery.

 7)      Google ‘em

Google the inventors and the principals of the company.  You never know what articles, books, videos, etc. may exist that will be helpful to your case. 

Many resources exist for engaging in self-help discovery.  The foregoing tips are not exhaustive and are not intended to replace the formal discovery process.  However, they can help you identify fertile avenues of investigation and to corroborate or refute information provided through the discovery process.