When should a patentee have to disclose the date of invention? The defendant would prefer a date before invalidity contentions so they don't waste time vetting reams of recent prior art only to have the plaintiff produce the inventor's 4th grade journal showing conception in the early 1930's. The plaintiff, on the other hand, would prefer not to go digging through lab notebooks to try and prove a conception date, only to find that all of the relevant prior art was carved on stone tablets by cabal of renaissance alchemists long before the inventor was born.
No Answer In The Rules
Neither the Delaware Default Standard for Discovery, nor the form scheduling orders of any of our judges address when the patentee should disclose its proposed invention date. Rulings on the issue are surprisingly sparse as well, and confined largely to transcripts. What authority there is comes largely from Judge Andrews, who has tended to require a patentee to at least provide their "best guess" at the date of invention prior to receiving the defendant's initial invalidity contentions. See Vehicle Interface Techs. v. Jaguar Land Rover N. Am., LLC, C.A. No. 12-1285-RGA, D.I. 25 at 21 (D. Del. June 14, 2013).
Judge Stark issued an order this week in Natera, Inc. v. ArcherDX, Inc., C.A. No. 20-125, D.I. 115 (D. Del. Jan. 12, 2021), that sheds a bit more light on the issue. In that case, the plaintiff had responded to an interrogatory requesting the date of conception and reduction to practice by first, citing several thousand pages of documents under Rule 33(d), and later adding a narrative response that discussed various milestones, but did not specifically claim any date of conception or reduction to practice. See id., D.I. 107, Ex.B. After serving its initial invalidity contentions, the defendant brought a discovery dispute requesting the Court order the patentee to provide the dates.Id., D.I. 107.
Judge Stark Orders The Patentee to Provide the Dates
In a brief order issued before the scheduled teleconference, Judge Stark noted that the requested information would be "need[ed] . . . soon to permit this case to proceed efficiently" and was "relevant and proportional to the needs of this case." Id., D.I. 115. Interestingly, however, he left open the question of when exactly the patentee would need to disclose this information, ordering the parties to "figure out a schedule and procedure for [the patentee] to disclose information . . .while retaining on [the defendant] the burden of proof and production with respect to invalidity."
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