The federal court system provides parties with the opportunity to engage in a broad level of discovery. Discovery is the formal process through which litigation participants exchange information that is relevant to the case. As a result, many plaintiffs will avoid doing extensive pre-planning before bringing a lawsuit and rely on the ability to obtain broad discovery, to their detriment.
The Court of Appeals for the Federal Circuit reminded potential patent-infringement plaintiffs that they should do a lot of pre-planning before bringing a lawsuit in Arendi S.A.R.L. v. LG Electronics, Inc., Case No. 2021-1967 (Fed. Cir. Sept. 9, 2022). This is due to the enactment of many sets of special-discovery rules for patent-infringement lawsuits that have been enacted by various courts, including the United States District Court of the District of Delaware, which was the district court in which the original Arendi lawsuits were brought.
Arendi S.A.R.L (“Arendi”), which was the plaintiff in the original lawsuit that resulted in the above-cited appellate decision, filed a lawsuit against LG Electronics, Inc. and a related company (collectively “LG”) alleging that various LG products infringed one of Arendi’s patents. After filing the initial lawsuit, Arendi and LG had to comply with the special patent rules, which set a fairly rigid discovery schedule.
One of those requirements required Arendi to set forth a set of “infringement contentions” that described in detail which products Arendi believed to be infringing the patent and the reasons why Arendi believed that those products infringed those patents. In response to this requirement, Arendi submitted a set of contentions relating to one exemplary accused product.
The lawsuit continued as the parties engaged in discovery. Then, at the close of discovery, Arendi submitted an expert report that included additional infringement contentions for five more products.
LG moved to strike the portions of the expert report that included the new infringement contentions. The trial judge granted the motion, orally, which caused Arendi to file a new patent lawsuit in the same court against LG.
The trial judge dismissed the second lawsuit as being duplicative. The Court of Appeals for the Federal Circuit upheld the dismissal using the duplicative-litigation doctrine.
The takeaway from these two lawsuits and appellate decision is that a plaintiff that intends to file a patent-infringement lawsuit should spend a considerable amount of time preparing infringement contentions before filing the lawsuit. These contentions should be directed to all products that may infringe the patent (or patents) that the plaintiff intends to assert.
Moreover, the plaintiff should engage an infringement expert as soon as possible so that the plaintiff does not wind up in the same position as Arendi.