Using Requests for Admission in Patent Litigation

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Tucker Law

Fort Lauderdale, FL

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Wrongful Death

Many times, facts which at first glance appear to be controverted can be fleshed out through serving the opposing party's patent attorney with request for admissions. Admissions can eliminate the need for expensive discovery. This is particularly true for patent cases where parties, witnesses, and evidence may be located or stored across the country, or even on a different continent. The district court will also appreciate the use of requests for admissions because it conserves court resources and time disputing issues that are otherwise not in controversy. Due to the complexity of patent litigation, reducing perceived disputes can allow focus on the true disputes.

Commit to Position

Requests can force patent holders and patent defendants to commit early on to their positions. This could have a negative impact on the party answering the requests as new information is uncovered during discovery process and as experts establish their opinions regarding infringement based on the facts and circumstances of the case. In addition, request for admissions can expose positions early in the patent litigation relating to knowledge of prior patents or the patents-in-suit.

Federal Rules of Civil Procedure 36

Rule 36 provides that "a party may serve on any other party a written request to admit, for the purposes of the pending action only, the truth of any matters within the scope of Rule 26(b)(1) relating to: (A) Facts, the application of law to fact, or opinions about either; and (B) the genuineness of any described documents. Once a request is served, the party to whom the request is served must respond within 30 days. Failing to respond can be severe as the request is admitted unless answered. The party may not simply cite a lack of knowledge or information as their reason for failing to admit or deny the requested information. And not all admissions can be amended. The court may permit the patent attorney to seek withdrawal or amendment of the admission, but the court is not required to. Thus, it is very important to carefully consider the implications of a particular admission before responding to prevent legal gymnastics used to elicit an admission that affects validity or enforcement of the patents at issue. It is notable that a party whom cannot justify an earlier denial may be required to pay costs associated with proving the requested Admission.

Scope of Admissions

Claim construction includes interpreting the language of the patent claims. A major component of patent attorney's position in patent litigation is seeking a patent claim construction interpretation that helps the outcome for their client. For example, the interpretation of the scope of a particular claim term or phrase may place the alleged infringer within

Requests for admissions are not likely to elicit information pertaining to the construction of a patent claim because claim construction is a matter of law for the court to decide. Accordingly, the patent counsel cannot respond to the application of law to fact when the claim construction has not yet been interpreted by the Court because the law, i.e. the claim construction, is unknown. Thus, the scope of the request for admissions may relate to solidifying ultimate facts, authentication of prior art and evidence, and knowledge and information of parties.

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