Pretrial Procedures Quiz

PDF page 77: The first steps in the pretrial procedure are the filing by the parties of their “initial disclosures” and the holding xxv of the preliminary pretrial conference. Initial disclosures must provide preliminary information about each party’s positions in the case, and disclose the identity and location of witnesses and documents likely to be xxvi relevant to the issues in the case. These disclosures help frame the “discovery,” or information that the parties can request of each other, which is one of the hallmarks of litigation in the United States and one of the drivers of the expense of litigation. The concept is laudable—require each party to disclose the information it has relevant to the case to preclude a “trial by ambush.” But, in practice, discovery can become an endless game of cat and mouse, with costs escalating exponentially. We will talk more about discovery shortly. The preliminary pretrial conference is usually the first time the parties appear in court before the judge, unless there has been a hearing on a pretrial motion (as discussed above). At this conference, the judge discusses with the parties the issues likely to arise in the case, the time that pretrial discovery is expected to take, and any issues that make the case unique (such as witnesses in foreign countries that require extraordinary means to obtain their testimony for trial). Each party is usually required to submit a report to the court in advance of this conference, proposing what the timeline for the case should be and identifying any unique issues. The court typically issues a scheduling order at, or shortly after, the pretrial conference, specifying dates by which certain activities must be concluded. This order often “splits the baby” between the plaintiff’s and defendant’s

PDF page 77: The first steps in the pretrial procedure are the filing by the parties of their “initial disclosures” and the holding xxv of the preliminary pretrial conference. Initial disclosures must provide preliminary information about each party’s positions in the case, and disclose the identity and location of witnesses and documents likely to be xxvi relevant to the issues in the case. These disclosures help frame the “discovery,” or information that the parties can request of each other, which is one of the hallmarks of litigation in the United States and one of the drivers of the expense of litigation. The concept is laudable—require each party to disclose the information it has relevant to the case to preclude a “trial by ambush.” But, in practice, discovery can become an endless game of cat and mouse, with costs escalating exponentially. We will talk more about discovery shortly. The preliminary pretrial conference is usually the first time the parties appear in court before the judge, unless there has been a hearing on a pretrial motion (as discussed above). At this conference, the judge discusses with the parties the issues likely to arise in the case, the time that pretrial discovery is expected to take, and any issues that make the case unique (such as witnesses in foreign countries that require extraordinary means to obtain their testimony for trial). Each party is usually required to submit a report to the court in advance of this conference, proposing what the timeline for the case should be and identifying any unique issues. The court typically issues a scheduling order at, or shortly after, the pretrial conference, specifying dates by which certain activities must be concluded. This order often “splits the baby” between the plaintiff’s and defendant’s

PDF page 78: The scheduling order will also usually specify a length of the trial (e.g., 8 trial days), subject to revision at the final pretrial conference. A typical patent trial is scheduled to last from 5 to 20 trial days, but some can take much longer. Let’s look at each step of this schedule to understand what is happening.

PDF page 78: Interrogatories are written questions that a party can ask of other parties in the litigation, but not of third parties. Such questions can request any nonprivileged information that is relevant to any party’s claim or defense—including the existence, description, nature, custody, condition, and location of any documents or other tangible things and the identity and location of persons who know of any discoverable information that xxxi may be relevant to the subject matter of the litigation. Interrogatories may also ask for opinions or the legal contentions of another party. The initial limit on the number of interrogatories is 25, including subparts. However, upon a showing of good cause, courts routinely permit additional interrogatories in patent litigation xxxii because the issues are usually complex. Answers to interrogatories are binding on the party providing them and may be used as admissions in the litigation, including at trial.

PDF page 79: Although in the United States, it is usually required that testimony at trial be presented live, with the opportunity for the opposing party to cross-examine the witness and for the jury and/or judge to assess each witness’s demeanor in person, testimony elicited via depositions during discovery may be used at trial under xxxv certain circumstances. For example, if a witness dies before trial, or is unavailable through no fault of the party seeking to use the deposition testimony, the deposition may be used as testimony at trial in lieu of live testimony from the witness. Also, the deposition testimony of an opposing party or an officer or manager of the opposing party corporation may be used at trial for any purpose. Usually, however, deposition testimony is used primarily to “impeach” a witness testifying live at trial—that is, to show that the witness at trial has changed prior testimony from when they gave the deposition. Videotaped deposition testimony is very effective to show to a judge or jury during trial that the witness has changed the testimony—such as from “No” to “Yes” or the equivalent! The parties can also demand that another party admit, for purposes of the pending litigation only, the truth of any facts, opinions, or conclusions, or the genuineness of any documents relevant to any party’s claim or xxxvi defense. Such demands are called requests for admission. The responses to these demands are binding on the responding party and can be used to conclusively establish the matters admitted in the litigation, including at trial.

PDF page 80: In virtually every patent case, a dispute arises over the meaning of certain language used in the asserted claims of the patents at issue. These are called “claim construction” disputes, and must be resolved by the judge before trial. The parties are permitted to provide their competing arguments in briefs to the court, usually after discovery is completed, and make an oral argument on their respective positions to the court at a claim construction hearing. These hearings are often called Markman hearings, after the name of the case that established that the judge, and not the jury, must decide the proper meaning of disputed claim xxxviii language. This is a critical juncture in every patent case because the opposing parties try to craft an interpretation of the claim language that supports their respective positions. Most patent claims are drafted using a range of language, from specific to general, in an effort by the patentee (and lawyer) to cover as much territory for the claim as possible. The PTO interprets proposed claims in the broadest reasonable way possible, and then compares their scope with the prior art, before allowing them. The goal of the patentee in dealing with the PTO is to get allowed the broadest claims possible, in order to get the broadest patent coverage possible. But the use of broad, general language in claims permits the parties in later litigation to argue for different interpretations, depending on their interests at the time of litigation. Thus, a plaintiff seeks an interpretation that is broad enough to encompass the defendant’s products and services so that infringement can be proven. In contrast, the defendant proposes a narrow interpretation (or “construction”) that excludes its products and services.

PDF page 80: In virtually every patent case, a dispute arises over the meaning of certain language used in the asserted claims of the patents at issue. These are called “claim construction” disputes, and must be resolved by the judge before trial. The parties are permitted to provide their competing arguments in briefs to the court, usually after discovery is completed, and make an oral argument on their respective positions to the court at a claim construction hearing. These hearings are often called Markman hearings, after the name of the case that established that the judge, and not the jury, must decide the proper meaning of disputed claim xxxviii language. This is a critical juncture in every patent case because the opposing parties try to craft an interpretation of the claim language that supports their respective positions. Most patent claims are drafted using a range of language, from specific to general, in an effort by the patentee (and lawyer) to cover as much territory for the claim as possible. The PTO interprets proposed claims in the broadest reasonable way possible, and then compares their scope with the prior art, before allowing them. The goal of the patentee in dealing with the PTO is to get allowed the broadest claims possible, in order to get the broadest patent coverage possible. But the use of broad, general language in claims permits the parties in later litigation to argue for different interpretations, depending on their interests at the time of litigation. Thus, a plaintiff seeks an interpretation that is broad enough to encompass the defendant’s products and services so that infringement can be proven. In contrast, the defendant proposes a narrow interpretation (or “construction”) that excludes its products and services.

PDF page 80: In virtually every patent case, a dispute arises over the meaning of certain language used in the asserted claims of the patents at issue. These are called “claim construction” disputes, and must be resolved by the judge before trial. The parties are permitted to provide their competing arguments in briefs to the court, usually after discovery is completed, and make an oral argument on their respective positions to the court at a claim construction hearing. These hearings are often called Markman hearings, after the name of the case that established that the judge, and not the jury, must decide the proper meaning of disputed claim xxxviii language. This is a critical juncture in every patent case because the opposing parties try to craft an interpretation of the claim language that supports their respective positions. Most patent claims are drafted using a range of language, from specific to general, in an effort by the patentee (and lawyer) to cover as much territory for the claim as possible. The PTO interprets proposed claims in the broadest reasonable way possible, and then compares their scope with the prior art, before allowing them. The goal of the patentee in dealing with the PTO is to get allowed the broadest claims possible, in order to get the broadest patent coverage possible. But the use of broad, general language in claims permits the parties in later litigation to argue for different interpretations, depending on their interests at the time of litigation. Thus, a plaintiff seeks an interpretation that is broad enough to encompass the defendant’s products and services so that infringement can be proven. In contrast, the defendant proposes a narrow interpretation (or “construction”) that excludes its products and services.

PDF page 80: The court resolves the dispute over the meaning of the contested claim terms by referring to the language of the claims, the language and drawings in the patent, and the history of the proceedings in the PTO that led to the issuance of the patent. The written record of that history is preserved in what is call a “file wrapper,” so named because all the written documents making up the history are contained in a three-part file folder, the two outer portions of which fold over and “wrap” the documents within it. The patentee is bound by what it told the PTO to secure allowance of the patent. The court interprets the language according to its ordinary meaning to someone of ordinary skill in the art to which the invention pertains, unless the patentee specially defined the language within the patent or its file wrapper. Once the claim construction decision is made by the court, the scope of the patent(s) in the case is fixed, and the only remaining issue for trial is whether the claims of the patent(s) as interpreted by the court are broad enough to include the accused products and services of the defendant(s).

PDF page 77: The first steps in the pretrial procedure are the filing by the parties of their “initial disclosures” and the holding xxv of the preliminary pretrial conference. Initial disclosures must provide preliminary information about each party’s positions in the case, and disclose the identity and location of witnesses and documents likely to be xxvi relevant to the issues in the case. These disclosures help frame the “discovery,” or information that the parties can request of each other, which is one of the hallmarks of litigation in the United States and one of the drivers of the expense of litigation. The concept is laudable—require each party to disclose the information it has relevant to the case to preclude a “trial by ambush.” But, in practice, discovery can become an endless game of cat and mouse, with costs escalating exponentially. We will talk more about discovery shortly. The preliminary pretrial conference is usually the first time the parties appear in court before the judge, unless there has been a hearing on a pretrial motion (as discussed above). At this conference, the judge discusses with the parties the issues likely to arise in the case, the time that pretrial discovery is expected to take, and any issues that make the case unique (such as witnesses in foreign countries that require extraordinary means to obtain their testimony for trial). Each party is usually required to submit a report to the court in advance of this conference, proposing what the timeline for the case should be and identifying any unique issues. The court typically issues a scheduling order at, or shortly after, the pretrial conference, specifying dates by which certain activities must be concluded. This order often “splits the baby” between the plaintiff’s and defendant’s

PDF page 78: Before information is shared between the parties, they usually agree on a protective order, which they will ask the court to enter, that specifies who has access to the confidential information produced during discovery in xxvii the litigation. This is important to all parties, and even third parties that may be asked to produce information during discovery, because sensitive business, technical, and financial information is routinely requested by and produced to each party during the lawsuit. The protective order proscribes that the disclosure of confidential information during discovery is limited to lawyers involved in handling the case, outside experts retained by the lawyers to assist them, and court reporters (who record testimony during the case), videographers (who videotape deposition testimony, as is now common), and court personnel. It is also typical that certain employees of each party (usually in-house lawyers and/or business people directly involved in the oversight of the case) are also permitted to review certain materials, but not financial information of a competitor or future business plans, which are usually excluded from being disclosed to any party employees. Everyone authorized to see confidential information is under court order to restrict use of the information to the pending lawsuit, not to disclose it to anyone not authorized by the protective order to see it, and requiring that all copies be returned or destroyed at the end of the case.

PDF page 80: In virtually every patent case, a dispute arises over the meaning of certain language used in the asserted claims of the patents at issue. These are called “claim construction” disputes, and must be resolved by the judge before trial. The parties are permitted to provide their competing arguments in briefs to the court, usually after discovery is completed, and make an oral argument on their respective positions to the court at a claim construction hearing. These hearings are often called Markman hearings, after the name of the case that established that the judge, and not the jury, must decide the proper meaning of disputed claim xxxviii language. This is a critical juncture in every patent case because the opposing parties try to craft an interpretation of the claim language that supports their respective positions. Most patent claims are drafted using a range of language, from specific to general, in an effort by the patentee (and lawyer) to cover as much territory for the claim as possible. The PTO interprets proposed claims in the broadest reasonable way possible, and then compares their scope with the prior art, before allowing them. The goal of the patentee in dealing with the PTO is to get allowed the broadest claims possible, in order to get the broadest patent coverage possible. But the use of broad, general language in claims permits the parties in later litigation to argue for different interpretations, depending on their interests at the time of litigation. Thus, a plaintiff seeks an interpretation that is broad enough to encompass the defendant’s products and services so that infringement can be proven. In contrast, the defendant proposes a narrow interpretation (or “construction”) that excludes its products and services.