Pretrial Procedures Quiz

PDF page 81: 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.

PDF page 81: 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.

PDF page 81: 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

PDF page 82: 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 proposed schedules (the plaintiff usually seeks speed while the defendant usually seeks delay). The figure below shows a typical scheduling order. 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 82: 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 proposed schedules (the plaintiff usually seeks speed while the defendant usually seeks delay). The figure below shows a typical scheduling order. 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 82: 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 82: A request for production allows a party to demand that another party turn over relevant documents and electronically stored information in its possession or control, as well as an inspection of property (such as a

PDF page 83: 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

PDF page 83: Depositions are interviews used to elicit testimony from witnesses having relevant knowledge. This is similar to eliciting testimony during a trial, but occurs in a conference room with a court reporter present to record what is said. The judge is not present at depositions, but may intervene if a controversy arises. Testimony can also be requested by written questions to a witness, which the witness then answers and

PDF page 83: 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!

PDF page 83: 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 83: 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

PDF page 84: 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