Plaintiff's Interrogatories in Hatch-Waxman Patent Litigation
(Brand to Generic)

Summary

This template is a Plaintiff's Interrogatories designed for use by an innovator patent owner as a starting point in preparing interrogatories for service on a generic challenger accused of infringement under the Hatch-Waxman Act. The template includes interrogatories seeking information relevant to issues such as claim construction, infringement, prior art, and invalidity contentions. This template also includes practical guidance and drafting notes. Use interrogatories to request information not readily obtainable from document requests, depositions, initial disclosures under Fed. R. Civ. P. 26(a), or any mandatory disclosures of claim construction and infringement/validity contentions under local patent rules. It is important to tailor your interrogatories to the facts and issues in your case, taking into account Rule 26(b)'s proportionality factors. Also consult local court rules and local patent rules for any restrictions or requirements for interrogatories. See, e.g., Southern District of New York L. Civ. R. 33.3 restricting use of interrogatories and allowing contention interrogatories only at the conclusion of other discovery. Answers to interrogatories may be used at trial to the extent permitted by the Federal Rules of Evidence. Fed. R. Civ. P. 33(c). You may serve interrogatories once your Rule 26(f) conference has been held. See Fed. R. Civ. P. 26(d)(1). Interrogatories served later in the case should be served at least 30 days before the close of discovery. Unless otherwise stipulated or ordered by the court, Rule 33 limits the number of interrogatories to 25. The court may impose a different limit in a case management order or local rules. Discrete subparts of an interrogatory count toward the 25-interrogatory limit. See Fed. R. Civ. P. 33(a)(1). Courts vary in how they define a discrete subpart, so check local case law on this issue before formulating your interrogatories. For a discussion of the case law, see 7-33 Moore's Federal Practice – Civil § 33.30. In general, subparts are treated as part of a single interrogatory where they are logically or factually subsumed within and necessarily related to the primary question. See, e.g., Medigus Ltd. v. Endochoice, Inc., 2016 U.S. Dist. LEXIS 156752, at *3 (D. Del. July 19, 2016). For further discussion on the use of interrogatories in patent litigation, see Horwitz on Patent Litigation § 5.04[2]. For more general information on the use of interrogatories in federal litigation, see Interrogatories: Drafting and Serving Interrogatories (Federal).