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Managing Discovery In Patent Cases: Best Practices
Law 360, New York (February 9, 2009) — An appointment as Discovery Special Master in a multidistrict
litigation of about 100 patent actions in the Central District of California demonstrated that managing
discovery in patent litigation requires specialized best practices to cope with unusual challenges:
• the volume of material, virtually all in electronic form;
• the tenaciousness of counsel; striking the right balance between traditional written
discovery and expert opinions;
• the scheduling pressures, driven by court-imposed deadlines for claim construction
and summary adjudication;
• privilege disputes complicated by waiver issues peculiar to patent law; scheduling
discovery for dozens of experts.
This article will briefly outline some “best practices” for a Discovery Special Master in complex
patent litigation.
1. Know the Law
A discovery master should be comfortable with recurring patent issues — infringement (direct
and indirect), invalidity (prior art, anticipation, obviousness), unenforceability (inequitable conduct,
prosecution laches), estoppel, waiver, willfulness, damages — because the scope of discovery is
framed by the elements of these claims and defenses.
Privilege claims will be dramatically impacted by a party’s reliance on advice of counsel. The parties
should provide the master with a binder of material and important case law on the key issues in
the particular case.
2. Know the Technology
A discovery master should be a “quick study” about the patented technology and be sensitive to
the legal signicance of minor differences in design or function. A joint in-person tutorial of a half
or full day, with a binder of key materials to refer to as the case evolves, will bring the discovery
Master up to speed.
3. Work With Lead Counsel
In a multi-action MDL proceeding there will typically be one or more lead counsel for both plaintiff
and defendant(s). Lead counsel will normally have the resources to help the discovery master
communicate with all counsel, distribute orders, schedule hearings and allocate the master’s billings
