Requests for Admission - IP Infringement

REQUESTS FOR ADMISSION -- INTELLECTUAL PROPERTY INFRINGEMENT

IN THE UNITED STATES DISTRICT COURT
FOR THE [________________________________] DISTRICT OF [________________________________]

PROPOUNDING PARTY INFORMATION

PRELIMINARY STATEMENT

Pursuant to Federal Rule of Civil Procedure 36, [________________________________] ("Propounding Party") hereby requests that [________________________________] ("Responding Party") admit the truth of the following matters and the genuineness of the documents described herein. These requests are directed to facts, the application of law to fact, and the genuineness of documents, within the scope of Fed. R. Civ. P. 26(b)(1).

IMPORTANT NOTICE: CONSEQUENCES OF FAILURE TO RESPOND

DEEMED-ADMITTED WARNING: Pursuant to Fed. R. Civ. P. 36(a)(3), each matter in these Requests for Admission is deemed admitted unless, within 30 days after service (or such longer or shorter time as the Court may order or the parties may stipulate), the Responding Party serves a written answer or objection addressed to the matter and signed by the party or the party's attorney. A matter admitted under Rule 36 is conclusively established for purposes of this action unless the Court permits withdrawal or amendment of the admission under Rule 36(b).

COST-SHIFTING WARNING: Pursuant to Fed. R. Civ. P. 37(c)(2), if the Responding Party fails to admit a matter that is later proved true at trial, the Propounding Party may move for the reasonable expenses, including attorney's fees, incurred in making that proof. The Court must order such payment unless: (A) the request was held objectionable under Rule 36(a); (B) the admission sought was of no substantial importance; (C) the party failing to admit had a reasonable ground to believe that it might prevail on the matter; or (D) there was other good reason for the failure to admit.

DEFINITIONS

For purposes of these Requests for Admission, the following definitions apply:

1. "YOU," "YOUR," or "RESPONDING PARTY" means the party to whom these requests are directed, including all officers, directors, employees, agents, representatives, predecessors, successors, subsidiaries, parent companies, affiliates, and all persons acting or purporting to act on behalf of said party.

2. "DOCUMENT" or "DOCUMENTS" has the same meaning as in Fed. R. Civ. P. 34(a) and includes all writings, drawings, graphs, charts, photographs, sound recordings, images, electronically stored information, and other data or data compilations stored in any medium from which information can be obtained, translated, if necessary, into reasonably usable form.

3. "ACCUSED PRODUCT(S)" or "ACCUSED INSTRUMENTALITY(IES)" means all products, services, processes, methods, systems, or instrumentalities that are alleged to infringe, misappropriate, dilute, or otherwise violate the Intellectual Property at issue.

4. "MARK" means any trademark, service mark, trade name, trade dress, logo, slogan, domain name, or other source identifier at issue in this litigation.

5. "PATENT-IN-SUIT" means the patent(s) asserted in this litigation, including all claims thereof.

6. "WORK" means the copyrighted work(s) at issue in this litigation.

7. "TRADE SECRET" means any information alleged to have been misappropriated in this litigation.

8. "RELEVANT PERIOD" means the time period from [__/__/____] to the present, unless otherwise specified.

INSTRUCTIONS

1. Responses Required. You must respond to each request separately and completely. Pursuant to Fed. R. Civ. P. 36(a)(4), if you cannot truthfully admit or deny a matter in its entirety, you must specifically deny the part that is untrue and admit the part that is true. You may assert lack of knowledge or information only if you state that you have made reasonable inquiry and that the information known or readily obtainable by you is insufficient to enable you to admit or deny the matter.

2. Specificity of Denials. A denial must fairly respond to the substance of the matter. When good faith requires that you qualify your answer or deny only a part of a matter, you must specify the part that is true and qualify or deny the remainder. Fed. R. Civ. P. 36(a)(4).

3. Objections. If you object to a request, you must state the grounds for objection. You must not assert lack of information as an objection; that is a basis for a qualified response, not an objection. The answer or objection must be signed by the party or the party's attorney. Fed. R. Civ. P. 36(a)(5).

4. Genuineness of Documents. Where a request asks you to admit the genuineness of a document, a copy of the document is attached as an exhibit or has been previously produced. If you contend the document is not genuine, you must state the specific basis for your contention.

5. Timeline. Responses are due within 30 days after service of these requests. Fed. R. Civ. P. 36(a)(3).

PART I: AUTHENTICITY AND GENUINENESS OF DOCUMENTS

REQUEST FOR ADMISSION NO. 1: Admit that the document attached as Exhibit [____] is a true and correct copy of U.S. [Patent/Trademark Registration/Copyright Registration] No. [________________________________].

REQUEST FOR ADMISSION NO. 2: Admit that the document attached as Exhibit [____] is a true and correct copy of the cease-and-desist letter dated [__/__/____] sent by [________________________________] to [________________________________].

REQUEST FOR ADMISSION NO. 3: Admit that the document attached as Exhibit [____] is a true and correct copy of the [agreement/license/contract] between [________________________________] and [________________________________] dated [__/__/____].

REQUEST FOR ADMISSION NO. 4: Admit that the document attached as Exhibit [____] is a true and correct copy of [________________________________]'s marketing materials for the Accused Product, including but not limited to [________________________________].

REQUEST FOR ADMISSION NO. 5: Admit that the document attached as Exhibit [____] is a true and correct copy of the invoice(s), purchase order(s), or sales record(s) reflecting the sale of the Accused Product by [________________________________].

REQUEST FOR ADMISSION NO. 6: Admit that the document attached as Exhibit [____] is a true and correct copy of the [USPTO Office Action/prosecution history document/assignment record] relating to [________________________________].

PART II: TRADEMARK OWNERSHIP AND VALIDITY

REQUEST FOR ADMISSION NO. 7: Admit that [________________________________] is the owner of U.S. Trademark Registration No. [________________________________] for the mark [________________________________].

REQUEST FOR ADMISSION NO. 8: Admit that U.S. Trademark Registration No. [________________________________] is valid and subsisting as of the date of these requests.

REQUEST FOR ADMISSION NO. 9: Admit that U.S. Trademark Registration No. [________________________________] is registered on the Principal Register of the United States Patent and Trademark Office.

REQUEST FOR ADMISSION NO. 10: Admit that the Mark [________________________________] has been in continuous use in commerce in connection with [________________________________] (goods/services) since at least [__/__/____].

REQUEST FOR ADMISSION NO. 11: Admit that you had knowledge of the Mark [________________________________] prior to your first use of the Accused Product or the accused mark.

REQUEST FOR ADMISSION NO. 12: Admit that you did not obtain a license, consent, or authorization from [________________________________] to use the Mark [________________________________] or any confusingly similar mark.

REQUEST FOR ADMISSION NO. 13: Admit that you did not conduct a trademark search or clearance investigation before adopting and using [________________________________] (the accused mark).

REQUEST FOR ADMISSION NO. 14: Admit that the Mark [________________________________] is not generic for the goods or services with which it is used.

REQUEST FOR ADMISSION NO. 15: Admit that you have not filed a petition for cancellation of U.S. Trademark Registration No. [________________________________].

PART III: LIKELIHOOD OF CONFUSION (TRADEMARK)

REQUEST FOR ADMISSION NO. 16: Admit that the Mark [________________________________] and the accused mark [________________________________] are similar in appearance, sound, or meaning.

REQUEST FOR ADMISSION NO. 17: Admit that the goods and/or services offered under the accused mark [________________________________] are related to or overlap with the goods and/or services offered under the Mark [________________________________].

REQUEST FOR ADMISSION NO. 18: Admit that the goods or services offered under the Mark [________________________________] and the accused mark [________________________________] are sold or offered through the same or overlapping channels of trade.

REQUEST FOR ADMISSION NO. 19: Admit that you have received at least one inquiry, complaint, or communication from a consumer, customer, or member of the public indicating confusion between the Mark [________________________________] and the accused mark [________________________________].

REQUEST FOR ADMISSION NO. 20: Admit that you were aware of the Mark [________________________________] at the time you adopted the accused mark [________________________________].

REQUEST FOR ADMISSION NO. 21: Admit that the Mark [________________________________] has acquired distinctiveness or secondary meaning in the relevant marketplace.

REQUEST FOR ADMISSION NO. 22: Admit that you have used the accused mark [________________________________] in interstate commerce.

PART IV: PATENT OWNERSHIP, VALIDITY, AND CLAIM CONSTRUCTION

REQUEST FOR ADMISSION NO. 23: Admit that U.S. Patent No. [________________________________] (the "Patent-in-Suit") was duly and legally issued by the United States Patent and Trademark Office.

REQUEST FOR ADMISSION NO. 24: Admit that [________________________________] is the owner by assignment of all right, title, and interest in the Patent-in-Suit.

REQUEST FOR ADMISSION NO. 25: Admit that the Patent-in-Suit has not been found invalid or unenforceable by any court or by the USPTO in any inter partes review, post-grant review, or reexamination proceeding.

REQUEST FOR ADMISSION NO. 26: Admit that you have not obtained any opinion of counsel concluding that the Patent-in-Suit is invalid.

REQUEST FOR ADMISSION NO. 27: Admit that Claim [____] of the Patent-in-Suit recites the limitation "[________________________________]."

REQUEST FOR ADMISSION NO. 28: Admit that the Accused Product [________________________________] includes [a feature/component/process step] that [________________________________] (description corresponding to a claim limitation).

REQUEST FOR ADMISSION NO. 29: Admit that the Accused Product [________________________________] was made, used, sold, offered for sale, or imported into the United States during the Relevant Period.

REQUEST FOR ADMISSION NO. 30: Admit that you had knowledge of the Patent-in-Suit on or before [__/__/____].

REQUEST FOR ADMISSION NO. 31: Admit that you continued to make, use, sell, offer for sale, or import the Accused Product after receiving notice of the Patent-in-Suit.

REQUEST FOR ADMISSION NO. 32: Admit that you have not identified any prior art that anticipates Claim [____] of the Patent-in-Suit under 35 U.S.C. Section 102.

REQUEST FOR ADMISSION NO. 33: Admit that you did not design around the Patent-in-Suit after becoming aware of it.

PART V: COPYRIGHT OWNERSHIP AND REGISTRATION

REQUEST FOR ADMISSION NO. 34: Admit that [________________________________] is the author and/or owner of the Work titled [________________________________].

REQUEST FOR ADMISSION NO. 35: Admit that the Work titled [________________________________] is registered with the U.S. Copyright Office under Registration No. [________________________________].

REQUEST FOR ADMISSION NO. 36: Admit that the copyright registration for the Work was made before or within five years after first publication, giving rise to a presumption of validity under 17 U.S.C. Section 410(c).

REQUEST FOR ADMISSION NO. 37: Admit that the Work titled [________________________________] is an original work of authorship within the meaning of 17 U.S.C. Section 102(a).

REQUEST FOR ADMISSION NO. 38: Admit that you had access to the Work titled [________________________________] before creating or distributing the Accused Product.

REQUEST FOR ADMISSION NO. 39: Admit that portions of the Accused Product are substantially similar to protectable elements of the Work titled [________________________________].

REQUEST FOR ADMISSION NO. 40: Admit that you did not obtain a license, assignment, or written authorization from [________________________________] to reproduce, distribute, display, perform, or create derivative works based upon the Work.

REQUEST FOR ADMISSION NO. 41: Admit that the Accused Product was distributed, reproduced, publicly displayed, or made available to the public in the United States during the Relevant Period.

REQUEST FOR ADMISSION NO. 42: Admit that you received the cease-and-desist letter dated [__/__/____] from [________________________________] regarding the alleged infringement of the Work, and continued to distribute or make available the Accused Product after receipt of that letter.

PART VI: TRADE SECRET IDENTIFICATION AND MISAPPROPRIATION

REQUEST FOR ADMISSION NO. 43: Admit that [________________________________] (description of the Trade Secret) constitutes confidential, proprietary information that is not generally known to the public or to competitors in the relevant industry.

REQUEST FOR ADMISSION NO. 44: Admit that [________________________________] derives independent economic value from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use.

REQUEST FOR ADMISSION NO. 45: Admit that [________________________________] took reasonable measures to maintain the secrecy of the Trade Secret, including but not limited to [________________________________] (e.g., non-disclosure agreements, access controls, security protocols).

REQUEST FOR ADMISSION NO. 46: Admit that you or your agent, employee, or representative had access to the Trade Secret during the course of [employment/business relationship/engagement] with [________________________________].

REQUEST FOR ADMISSION NO. 47: Admit that [________________________________] (the individual) signed a Non-Disclosure Agreement or Confidentiality Agreement with [________________________________] dated [__/__/____] that covered the Trade Secret.

REQUEST FOR ADMISSION NO. 48: Admit that you used or disclosed information derived from the Trade Secret in the development, manufacture, marketing, or sale of the Accused Product.

REQUEST FOR ADMISSION NO. 49: Admit that you did not independently develop the [technology/process/formula/method] used in the Accused Product without reference to the Trade Secret.

REQUEST FOR ADMISSION NO. 50: Admit that you did not obtain the information constituting the Trade Secret through reverse engineering of a lawfully obtained product.

PART VII: DAMAGES AND FINANCIAL MATTERS

REQUEST FOR ADMISSION NO. 51: Admit that you generated revenue from the sale, licensing, or distribution of the Accused Product during the Relevant Period.

REQUEST FOR ADMISSION NO. 52: Admit that total gross revenue attributable to the Accused Product during the Relevant Period exceeds $[________________________________].

REQUEST FOR ADMISSION NO. 53: Admit that you have not paid any royalty, license fee, or other compensation to [________________________________] for the use of the Intellectual Property at issue.

REQUEST FOR ADMISSION NO. 54: Admit that the Accused Product competed with [________________________________]'s products or services in the same market or markets during the Relevant Period.

REQUEST FOR ADMISSION NO. 55: Admit that [________________________________]'s sales, revenues, or market share declined during the Relevant Period in the market(s) where the Accused Product was sold or offered.

REQUEST FOR ADMISSION NO. 56: Admit that the document attached as Exhibit [____] is a true and correct copy of your financial statements, tax returns, or accounting records reflecting revenue from the Accused Product for the fiscal year(s) [________________________________].

PART VIII: WILLFULNESS AND NOTICE

REQUEST FOR ADMISSION NO. 57: Admit that you received the communication from [________________________________] dated [__/__/____] informing you of [________________________________]'s Intellectual Property rights and demanding that you cease and desist from the alleged infringing activity.

REQUEST FOR ADMISSION NO. 58: Admit that you did not cease the allegedly infringing activity after receiving the cease-and-desist communication referenced in the preceding request.

REQUEST FOR ADMISSION NO. 59: Admit that you did not conduct any investigation or analysis to determine whether the Accused Product infringed [________________________________]'s Intellectual Property rights after receiving notice of the alleged infringement.

REQUEST FOR ADMISSION NO. 60: Admit that you did not obtain a written opinion of counsel concluding that the Accused Product does not infringe [________________________________]'s Intellectual Property rights.

REQUEST FOR ADMISSION NO. 61: Admit that the Intellectual Property at issue was marked, labeled, or accompanied by notice of the owner's rights (e.g., patent marking under 35 U.S.C. Section 287, the (R) symbol for registered trademarks, copyright notice under 17 U.S.C. Section 401, or "confidential" markings for trade secrets).

PART IX: DEFENSES

REQUEST FOR ADMISSION NO. 62: Admit that you have no evidence that [________________________________] committed fraud or inequitable conduct before the USPTO in connection with the prosecution of the Intellectual Property at issue.

REQUEST FOR ADMISSION NO. 63: Admit that you have no evidence that [________________________________] abandoned the Intellectual Property at issue.

REQUEST FOR ADMISSION NO. 64: Admit that you have no evidence that [________________________________] engaged in laches, estoppel, or unclean hands with respect to the enforcement of the Intellectual Property at issue.

REQUEST FOR ADMISSION NO. 65: Admit that you did not obtain a license, covenant not to sue, or other authorization from [________________________________] to engage in the conduct alleged to constitute infringement or misappropriation.

REQUEST FOR ADMISSION NO. 66: Admit that you have not asserted a defense of fair use (copyright), nominative fair use (trademark), or experimental use (patent) in your answer or any amended pleading in this action.

PART X: INTERNET AND E-COMMERCE

REQUEST FOR ADMISSION NO. 67: Admit that you sold the Accused Product through [________________________________] (online marketplace or website) during the Relevant Period.

REQUEST FOR ADMISSION NO. 68: Admit that the product listing for the Accused Product on [________________________________] (marketplace/website) used the term [________________________________] (the Mark, patent number, or Work title).

REQUEST FOR ADMISSION NO. 69: Admit that you registered the domain name [________________________________] during the Relevant Period.

REQUEST FOR ADMISSION NO. 70: Admit that you used the domain name [________________________________] to sell, promote, or distribute the Accused Product during the Relevant Period.

PART XI: IMPORTATION AND MANUFACTURING

REQUEST FOR ADMISSION NO. 71: Admit that the Accused Product was manufactured in whole or in part outside the United States.

REQUEST FOR ADMISSION NO. 72: Admit that you imported or caused to be imported the Accused Product into the United States during the Relevant Period.

REQUEST FOR ADMISSION NO. 73: Admit that you are the importer of record for the Accused Product as reflected in U.S. Customs and Border Protection records.

PART XII: INJUNCTIVE RELIEF

REQUEST FOR ADMISSION NO. 74: Admit that you have continued to make, use, sell, offer for sale, distribute, or import the Accused Product as of the date of these requests.

REQUEST FOR ADMISSION NO. 75: Admit that absent injunctive relief, you intend to continue making, using, selling, offering for sale, distributing, or importing the Accused Product.

FRCP RULE 36 COMPLIANCE NOTES

STATE-SPECIFIC VARIATION NOTES

California

• California state courts: Requests for Admission governed by Cal. Code Civ. Proc. Sections 2033.010-2033.420.
• Limit of 35 requests per set (including all subparts) absent stipulation or court order. Cal. Code Civ. Proc. Section 2033.030.
• Responses due within 30 days (35 days if served by mail). Cal. Code Civ. Proc. Section 2033.250.
• Deemed-admitted consequences apply if no timely response served. Motion to withdraw or amend available under Cal. Code Civ. Proc. Section 2033.300.
• Requests for admission of the genuineness of documents: must attach the document or make it available for inspection.

Texas

• Texas state courts: Requests for Admission governed by Tex. R. Civ. P. 198.
• No specific numerical limit imposed by the rules, but courts may limit upon motion.
• Responses due within 30 days (50 days if served with the citation). Tex. R. Civ. P. 198.2.
• Deemed-admitted rule applies. Withdrawal requires showing of good cause and no undue prejudice.
• Requests may address mixed questions of law and fact.

Florida

• Florida state courts: Requests for Admission governed by Fla. R. Civ. P. 1.370.
• No specific numerical limit, but courts have discretion to limit on motion for protective order.
• Responses due within 30 days (45 days if served with process). Fla. R. Civ. P. 1.370(a).
• Deemed admitted if not timely answered. Court may permit withdrawal upon motion showing manifest injustice.
• Each matter must be separately stated.

New York

• New York state courts: Requests for Admission governed by CPLR Section 3123.
• Deemed admitted if not responded to within 20 days. CPLR Section 3123(a).
• Shorter response time than federal (20 days vs. 30 days) -- practitioners must be vigilant.
• Requests limited to matters of fact and genuine issues (not legal conclusions).
• Court may permit withdrawal or amendment upon motion.

PRACTICE TIPS AND STRATEGIC NOTES

Effective Use of RFAs in IP Cases

☐ Pin down undisputed facts early. Use RFAs to establish foundational facts (ownership, registration, dates) that streamline trial preparation and reduce the number of issues for trial.

☐ Authenticate documents efficiently. RFAs are the most cost-effective way to establish the genuineness of documents, avoiding the need for authentication testimony at trial.

☐ Set up willfulness. RFAs establishing notice, knowledge, and continued conduct after notice are critical building blocks for enhanced damages claims in patent (35 U.S.C. Section 284), trademark (15 U.S.C. Section 1117(b)), and copyright (17 U.S.C. Section 504(c)(2)) cases.

☐ Narrow defenses. Force the opposing party to commit to specific defenses or admit the absence of supporting evidence. Admissions eliminate issues from trial and may support summary judgment.

☐ Coordinate with other discovery. Use RFA responses to frame deposition questioning. If a party denies a request, explore the factual basis for the denial during the deposition.

Deemed-Admitted Strategy

☐ Calendar the deadline immediately. Track the 30-day response deadline carefully. Failure to respond results in deemed admissions that are conclusively established.

☐ Monitor for sufficiency. Review responses carefully for compliance with Rule 36(a)(4). Responses that fail to specifically admit or deny, or that assert lack of knowledge without demonstrating reasonable inquiry, may be challenged by motion.

☐ Move for expenses under Rule 37(c)(2). If matters denied in RFAs are subsequently proved at trial, move for the reasonable expenses (including attorney's fees) incurred in making that proof.

IP-Specific Considerations

☐ Patent cases: Use RFAs to establish claim limitations met by the Accused Product, prosecution history positions, and the absence of invalidating prior art. Consider timing relative to claim construction proceedings.

☐ Trademark cases: Focus on knowledge of the mark, similarity of the marks, relatedness of goods/services, and evidence of actual confusion. RFAs can lock in facts supporting likelihood-of-confusion factors.

☐ Copyright cases: Establish access, registration validity, and absence of license. RFAs that the copyright registration was timely filed establish the presumption of validity under 17 U.S.C. Section 410(c).

☐ Trade secret cases: Use RFAs to confirm the existence of confidentiality agreements, the secrecy measures in place, and the absence of independent development or reverse engineering defenses.

RFA Selection Guide by Case Type

Key Case Law on Requests for Admission

Responding to RFAs -- Tips for the Receiving Party

☐ Calendar the 30-day deadline immediately. Failure to timely respond results in deemed admissions that are conclusively established and extremely difficult to withdraw.

☐ Conduct reasonable inquiry before asserting lack of knowledge. Rule 36(a)(4) requires that you state you have made "reasonable inquiry" before claiming insufficient knowledge. Document the inquiry conducted.

☐ Do not equivocate. Evasive or equivocal responses may be treated as failures to respond. If a matter is substantially true, admit it and qualify only the inaccurate portion.

☐ Preserve objections. If you object to a request, state the objection with specificity. Unlike interrogatories, there is no separate provision for answering the non-objectionable part, but best practice is to respond to the substance even when objecting.

☐ Move to withdraw if circumstances change. Under Rule 36(b), the court may permit withdrawal or amendment of an admission upon a showing that (1) it would promote the presentation of the merits and (2) the requesting party would not be prejudiced in maintaining its action or defense. Act promptly.

VERIFICATION AND SIGNATURE

Respectfully submitted,

Date: [__/__/____]

Signature: ________________________________

[________________________________]
Attorney for [________________________________]
[________________________________] (Firm Name)
[________________________________] (Address)
[________________________________] (City, State, ZIP)
Telephone: [________________________________]
Email: [________________________________]
Bar No.: [________________________________]

CERTIFICATE OF SERVICE

I hereby certify that on [__/__/____], I served the foregoing Requests for Admission -- Intellectual Property Infringement upon all counsel of record via:

☐ CM/ECF electronic filing system
☐ Email to: [________________________________]
☐ First-class U.S. mail, postage prepaid
☐ Hand delivery
☐ Overnight courier service

Served upon:

[________________________________]
[________________________________]
[________________________________]
[________________________________]

Signature: ________________________________

[________________________________]
Attorney for [________________________________]

SOURCES AND REFERENCES

• Fed. R. Civ. P. 36 -- Requests for Admission
• Fed. R. Civ. P. 37(c)(2) -- Failure to Admit
• Fed. R. Civ. P. 26 -- General Provisions Governing Discovery
• 35 U.S.C. Section 284 -- Enhanced Damages for Patent Infringement
• 15 U.S.C. Section 1117 -- Recovery for Trademark Infringement
• 17 U.S.C. Sections 410(c), 504(c) -- Copyright Registration Presumption and Statutory Damages
• 18 U.S.C. Sections 1836-1839 -- Defend Trade Secrets Act