Client-Centered Intellectual Property Solutions

A potential way to deal with an uncooperative defendant

On Behalf of | Aug 1, 2022 | Patent Litigation |

One of the most important steps in patent litigation is the discovery process. After you’ve discovered someone is using your patent, filed your patent complaint and received a response from the defendant, you most likely received a scheduling order from the court.

A scheduling order not only sets a date for trial but lays out several other deadlines for steps that must be completed prior to the trial date. One of these is the discovery deadline.

Discovery is exactly what it sounds like – discovering information about each other. During the discovery process, you and the defendant can use various methods to discover what information the other has.

These methods can include requests for documents or depositions. But what happens if the defendant refuses to cooperate and provide you with your requested information?

Make the defendant prove their case

Although you have many available options to handle an uncooperative defendant, one potential solution is to use United States Code section 295 to shift the burden of proof over to the defendant.

In a typical patent infringement case, the person holding the patent must prove their patent has been infringed. However, section 295 allows the court to assume patent infringement occurred and requires the defendant to prove it did not.

Succeeding using section 295 is extremely challenging. Therefore, it may be best to work with an experienced patent litigation attorney.

Showing a substantial likelihood that your product was infringed

To convince the court to shift the burden of proof to the defendant, first you must demonstrate that there was a substantial likelihood that the defendant’s product was made by an already patented process.

Proving a substantial likelihood can be difficult but may be done through expert witnesses, physical evidence or other available evidence.

Demonstrating you made reasonable efforts

Next, you must prove to the court that you made a reasonable effort to determine the process used to make the defendant’s product and were unable to do so. Showing a reasonable effort can be done though demonstrating you’ve engaged in all possible forms of discovery, without success.

Once you have proven both things to the court, the burden now shifts to the defendant to prove they did not infringe your patent.