Certain federal district courts have specific local rules that require parties to produce additional documents and ESI prior to the opening of the discovery period in patent cases. The Western District of Pennsylvania is one of those districts.

In the Western District of Pennsylvania, a party asserting patent infringement is required to produce the following documents and ESI:

1. All Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site testing agreement and third party or joint development agreements) sufficient to evidence each discussion with, disclosure to, or other manner of providing to a third party, or sale of or offer to sell or other manner of transfer, the claimed invention prior to the date of application for the patent in suit;

2. All documents evidencing the conception, reduction to practice, design, and development of each claimed invention, which were created on or before the date of application for the patent in suit or a priority date otherwise identified for the patent in suit, whichever is earlier; and

3. All documents evidencing communications to and from the U.S. Patent Office for each patent in suit and for each patent on which a claim for priority is based.

LPR 3.1 (a).

Even if a lawsuit is filed in another district court, it is likely that the accused infringer will request the production of those documents and ESI. Accordingly, a potential litigant should preserve the documents/ESI that falls within the scope of this rule in anticipation of litigation, if such documents/ESI exists.