Understanding 2015 Patent Reform: Part 3 - Discovery

In a series of posts on 2015 Patent Reform.

Discovery Limits

Redlining the discovery sections isn't going to be very useful, because they're written using almost entirely different language.

In both acts, a "discovery stay" is created whereby the parties generally cannot conduct discovery during the pendency of defensive motions. This is a logical extension of the need to stop litigation in its tracks where it's clear that the other party is advancing a non-meritorious case and the court could otherwise allow abusive extensive discovery before it even decides if the other party has pleaded properly.

Below, I give a tabular summary of the similarities:

General Stay Rules

PATENT ActInnovation Act
Except as provided in subsections (b) and (c), in a civil action arising under any Act of Congress relating to patents, discovery shall be stayed during the pendency of 1 or more motions described in paragraph (2) if the motion or motions were filed prior to the first responsive pleading. (2) Motions described The motions described in this paragraph are— (A) a motion to dismiss; (B) a motion to transfer venue; and (C) a motion to sever accused infringers. Except as provided in subsection (d), in an action for patent infringement under section 271 or an action for a declaratory judgement that a patent is invalid or not infringed, discovery shall be stayed if (1) the defendant moves to (A) sever a claim or drop a party for misjoinder under Rule 21 of the Federal Rules of Civil Procedure; (B) transfer the action under section 1404(a) of title 28; (C) transfer or dismiss the action under section 1406(a) of title 28; or (D) dismiss the action pursuant to Federal Rule of Civil Procedure 12(b); and (2) such motion is filed within 90 days after service of the complaint and includes a declaration or other evidence in support of the motion. ... A stay entered under subsection (a) shall expire when all motions that are the basis for the stay are decided by the court.

Editorial Notes:

  • 28 USC 1405(a) is Forum Non Conveniens and 28 USC 1406(a) is Improper Venue.

  • The PATENT Act appears to anticipate the motion creating the discovery stay to occur before the first responsive pleading. Remember that according to FRCP 12(b), the first responsive pleading must come 21 days after service, or 60 days if service was waived.

  • The Innovation Act gives a full 90 days. Recall, however, that 12(b) states that most of these motions must be made before the first responsive pleading


PATENT ActInnovation Act
(b) Discretion To expand scope of discovery (1) Resolution of motions. A court may allow limited discovery necessary to resolve a motion described in subsection (a) or a motion for preliminary relief properly raised by a party before or during the pendency of a motion described in subsection (a). (2) Additional discovery. On motion, a court may allow additional discovery if the court finds that such discovery is necessary to preserve evidence or otherwise prevent specific prejudice to a party. (c) Exclusion from discovery limitation. (1) Voluntary exclusion. The parties to an action described in subsection (a) may voluntarily consent to be excluded, in whole or in part, from the limitation on discovery under subsection (a). (2) Claims under section 271(e). This section shall not apply to a civil action that includes a claim for relief arising under section 271(e).
(d) Exception (1) Discovery necessary to decide motion. Notwithstanding subsection (a), the court may allow such discovery as the court determines to be necessary to decide a motion to sever, drop a party, dismiss, or transfer. (2) Competitive harm. Subsections (a) and (c) shall not apply to an action in which the patentee is granted a preliminary injunction to prevent harm arising from the manufacture, use, sale, offer for sale, or importation of an allegedly infringing product or process that competes with a product or process made, sold, or offered for sale by the patentee. (3) Consent of the parties. The patentee and an opposing party shall be excluded, in whole or in part, from the limitations of subsections (a) and (c) upon such parties’ filing with the court a signed stipulation agreeing to such exclusion. (4) FDA and biological product application. Subsections (a) and (c) shall not apply to an action that includes a cause of action described under section 271(e)(2).

Editorial Notes:

  • There's a clear difference in that the PATENT Act gives an open-ended "preventing prejudice" section which leaves doors open for judicial discretion but also, potentially abusive discovery motion practice.

  • The Innovation Act, in its place, allows discovery if the Plaintiff has successfully obtained a preliminary injunction.

  • Both acts exempt Hatch-Waxman litigation from discovery stays.

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