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February 21, 2017 Top Story

Court Rejects Black Letter Numerical Limit on Interrogatories

Court adopts “related question approach” in requiring party to answer discrete subparts

Theresa A. Vitello

A federal district court compelled a patent litigation defendant to answer interrogatories which the defendant contended exceeded the numerical limit imposed by Federal Rule of Civil Procedure 33(a)(1). The court held that in the context of patent litigation involving only one accused product and sufficiently related patents, an interrogatory with multiple subparts will be counted as a single interrogatory for purposes of the Rule 33 limit.

In Synopsys, Inc. v. Atoptech, Inc., the plaintiff sued the defendant for patent infringement based on just one allegedly infringing product. The plaintiff moved to compel responses to interrogatories, which the defendant opposed because it had previously answered the plaintiff’s first set of five interrogatories with at least 21 different subparts. The defendant argued that responding to plaintiff’s second set of interrogatories would exceed the 25 interrogatory limit. 

The court examined whether the case involved more than one accused product, the number of patents in the suit, and whether interrogatories that asked for facts, documents, and witnesses related to a discrete subject or contention. Although there were four patents in the suit, the court concluded that there was only one accused product and the patent applications were sufficiently related to be the subject of a single inquiry.

Subparts Covering Distinct Products or Patents Are Separate Interrogatories

Rule 33(a)(1) limits the number of written interrogatories one party may serve on another to 25, including all discrete subparts. The Rule does not, however, define the term “discrete subparts.” In general, courts interpreting the term conclude that what constitutes a discrete subpart is case specific.

The complexities of patent litigation present additional challenges for determining what constitutes a discrete subpart of an interrogatory. The “related question” approach, adopted in Safeco of Am. v. Rawstrom, examines whether an interrogatory’s subparts are logically or factually subsumed within and necessarily related to the primary question. In Erfindergemeinschaft Uropep GbR v. Eli Lilly Co., the court combined the “related question” approach with pragmatic considerations, such as whether a particular interrogatory should actually be construed as separate interrogatories. 

In a patent case involving multiple accused products, courts generally conclude that a single interrogatory seeking information about all accused products contains at least as many discrete subparts as there are accused products at issue. In Collaboration Props., Inc. v. Polycom, Inc., for example, a case involving 26 distinct accused products, the court held that the party serving the interrogatories could not avoid the numerical limitation by asking questions about distinct subjects but numbering the questions as subparts.

One Interrogatory May Seek Related Facts, Documents, and Witnesses

Acknowledging a circuit split on whether an interrogatory asking for facts, documents, and witnesses contains three distinct subparts, the Synopsys court held that insofar as an interrogatory seeking this information relates to one subject or one contention, it should be counted as one interrogatory. That court relied on, Inc. v. Endicia, Inc., et al., which held that when a request for facts, documents, and witnesses relates to a single contention, the three seemingly distinct requests were subsumed within the primary question, and should be considered as one interrogatory.

Potential Impact of Treating Subparts as a Single Interrogatory

Section leaders are concerned about counting an interrogatory with multiple subparts as a single question. “As of December 2015, the amended Federal Rules require consideration of whether discovery is proportional to the case. It seems this opinion did not give consideration to proportionality, despite the subject matter of the case, because as the court stated, only one accused product was in question. Therefore, a crafty litigator could easily avoid the rule of limitation by listing the items under subparts,” says Angela Foster, North Brunswick, NJ, cochair of the ABA Section of Litigation’s Intellectual Property Litigation Committee. “To the extent a defendant is required to answer many more than the 25 interrogatory presumptive limit, it could cost a significant amount of time and effort,” agrees Robert J. Will, St. Louis, MO, cochair of the Section of Litigation’s Pretrial Practice & Discovery Committee.

Section leaders agree that Synopsys provides decisive guidance for litigators both propounding and opposing interrogatories with multiple subparts in excess of the limit. “The opinion provides a road map for a party seeking to compel answers to interrogatories. A party seeking to successfully object to answering interrogatories should raise the proportionality issue,” suggests Foster.

“Interrogatory counting is contextual and based on the case at hand and nature of the interrogatories. There is not a one-size-fits-all answer,” says Will. “If you are the party claiming an excessive number of interrogatories in an attempt to limit responses, be familiar with the ‘counting’ methodology applicable to your particular subject matter and try, to the extent possible, to raise arguments that fit helpful precedent tending to consider subparts as discrete and separate interrogatories,” adds Will.


Theresa A. Vitello is an associate editor for Litigation News.

Keywords: patent, interrogatory, subparts, accused product, intellectual property

Related Resources

  • Rambus Inc. v. NVIDIA Corp., Nos. C-08-03443 SI and C-08-05500 SI, 2011 WL 11746749, at *14 (N.D. Cal. Aug. 24, 2011).

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