Draft Discovery Requests Patent

Skill: Draft First Discovery Requests in Patent Infringement Action

1. Subject-matter triage

• Confirm the governing forum rules, any patent local rules, and the scheduling order before drafting.
• Identify the asserted patent, accused instrumentality, pleaded defenses and counterclaims, and any technology, licensing, or employment facts that appear in the pleadings or initial disclosures.
• If the case implicates source code, manufacturing process data, testing data, or proprietary technical documents, tailor the requests to those materials and specify a workable production format and review protocol.

2. Failure modes the skill is correcting

• Drafting generic patent discovery that does not track the accused technology, the asserted claim theory, or the pleaded defenses.
• Omitting discovery aimed at invalidity, noninfringement, unenforceability, or other affirmative defenses.
• Failing to request damages evidence such as revenue, profits, apportionment inputs, pricing, licenses, and financial records tied to the accused products or services.
• Ignoring technical custody and location issues, which can make production disputes predictable and avoidable.
• Using requests that are overbroad, underdefined, or not proportional to the needs of the case under the applicable discovery rules.

3. Legal frameworks / domain conventions that apply

• Federal Rule of Civil Procedure 33 governs interrogatories; Federal Rule of Civil Procedure 34 governs requests for production; Federal Rule of Civil Procedure 26(b)(1) governs scope and proportionality.
• Patent discovery should be organized around infringement, validity, damages, licensing, and any pleaded affirmative defenses.
• Technical discovery may include product architecture, design documents, specifications, test results, source code, build materials, manufacturing records, and release histories.
• Damages discovery should seek the data needed to evaluate royalty base, royalty rate, profits, apportionment, price erosion, convoyed sales, and notice.
• If prior employment, invention ownership, or knowledge transfer is at issue, employment files, onboarding records, exit materials, and communications may be discoverable.
• If privilege or work-product concerns are likely, separate factual requests from communications with counsel and draft requests narrowly enough to avoid predictable objections.

4. Analytical scaffolds

• Issue-to-request mapping: convert each infringement, validity, and damages issue into a request category and then into narrowly framed interrogatories and document requests.
• Claim-element targeting: for each asserted claim, identify the accused functionality, component, or process that maps to each material element.
• Defense-targeting: draft discovery that forces the defendant to state the factual basis for noninfringement, invalidity, unenforceability, and any other affirmative defenses.
• Damages-document buildout: seek the underlying financial and commercial documents, not only summary figures, so the royalty, profit, and apportionment analysis can be tested.
• Technical-document sequencing: start with high-level identification and then move to architecture, specifications, testing, revisions, and communications.
• Privilege-aware drafting: ask for nonprivileged facts, facts supporting contentions, and business records; avoid requesting attorney mental impressions or privileged communications.

5. Vertical / structural / temporal relationships

• Use a temporal structure that reaches from conception and development through launch, sales, notice, redesign, and present operations when those periods matter to infringement or damages.
• Where multiple accused products, versions, or services exist, separate them by product family, version, or release period rather than collapsing them into one request.
• Where multiple defenses are pleaded, treat each as a distinct discovery lane so factual admissions or document production cannot be satisfied by a generic answer.
• If licensing history is relevant, distinguish between the asserted patent, comparable technologies, settlement licenses, and business-development negotiations.
• If the technology changed over time, requests should capture design revisions, version histories, and the timing of each change relative to notice or suit.

6. Output structure conventions

• Draft two separate documents: one for first-set interrogatories and one for first-set requests for production.
• Begin each document with short definitions and instructions that are useful but not bloated.
• Organize interrogatories by topic: party identification, accused products/processes, infringement contentions, invalidity defenses, damages, licensing, technical witnesses, and preservation.
• Organize requests for production by topic: technical documents, specifications, design and testing materials, source code or equivalent materials if relevant, financial and sales documents, licenses, communications, prior-art materials, employment-related materials, and preservation materials.
• Use numbered requests, clear topic labels, and phrasing that asks for nonprivileged facts and documents supporting contentions.
• Frame each request so it is specific enough to survive objections, but broad enough to capture the materials needed for later expert analysis.
• If the file format is constrained, ensure the operative discovery text is complete and ready for final conversion, with no placeholder-only draft.