E-Discovery in Patent Litigation: What You Need to Know in 2015 and Beyond
The complexity of patent lawsuits filed in the US continues to increase each year. Patent litigation typically is very costly due to the complexity of e-discovery and other issues such as the number of claims asserted, damage exposure, judges’ standing orders, and the degree of cooperation of the parties. Our panel of key thought leaders and practitioners, hosted by The Knowledge Group, will provide a review and discussion of the most pertinent issues relating to e-Discovery in Patent Litigation. This interactive course will provide crucial insights to help you and your clients avoid the associated, common pitfalls and risk issues in 2015 & beyond.
Key topics include:
- Major E-Discovery Challenges in Patent Litigation
- Latest Reform Efforts
- Model Orders: Risks and Limitations
- Best Practices in e-Discovery for Patent Litigation
Fox Rothschild LLP
Fox Rothschild LLP
- A meet-and-confer gone wrong: opposing counsel arguing over e-discovery issues (search terms, custodians, etc.) in a patent case in the District of Delaware prior to the implementation of the Delaware Default Standard for E-Discovery.
- A mock oral argument after the implementation of the Default Standard: an obstructionist attorney presenting argument to a Special Master as to why he will not produce certain information, with the Special Master correcting the attorney’s misunderstanding of the Default Standard.
- A general discussion about the Delaware Default Standard for E-Discovery and how it has helped to streamline patent litigation in Delaware.
Sutherland Asbill & Brennan LLP
Early Case Management Considerations. Time to preserve eDiscovery costs begins very early in case, and counsel should be aware of issues to incorporate into case management plan. Some issuesaddressed across different districtsinclude:
- Notable issues in EDTX:
- Limitations on E-mail Productions. Limitations include: search terms; number of custodians; timing (after initial production of non-email technical/prior art documents); and date ranges. [[EDTX E-discovery order at section 7-9 and also the attached Sedona Conference Cooperation Proclamation: Resources for the Judiciary (2014), section 9.1.]]
- Mobile Devices data production not required [[EDTX E-discovery order at 5.F]]
- Notable issues in D. Del.
- Plaintiff names accused products 30 days after Rule 16 conference; Defendant produces core technical document production 30 days after that
- Discovery limited to timeframe beginning six years before filing of the complaint (with limited exceptions)
- If producing party elects to use search terms for locating ESI, the requesting party may add up to 10 additional search terms to be added
- Judge Stark’s emphasis on counsel speaking with each other to try and resolve discovery disputes before bringing the dispute to the Court’s attention
- Notable issues in NDCA:
- NDCA set forth three documents: ESI Guidelines, ESI Checklist (to prepare for Rule 26(f) meet and confer), and a model stipulation for e-discovery (all attached). Notable issues raised in those:
- Appointment of an e-Discovery liaison: “If a dispute arises that involves the technical aspects of e-discovery, each party shall designate an e-discovery liaison who will be knowledgeable about and responsible for discussing their respective ESI. An e-discovery liaison will be, or have access to those who are, knowledgeable about the location, nature, accessibility, format, collection, searching, and production of ESI in the matter”
- Phasing of eDiscovery searching should be considered (sources, custodians, time periods): “so that discovery occurs first from sources most likely to contain relevant and discoverable information and is postponed or avoided from sources less likely to contain relevant and discoverable information”
- According to the model stipulation on E-discovery, e-mail not subject to general production requests; must propound specific e-mail production requests.
- Cost shifting of disproportionate ESI production requests will be considered.
- Additional Considerations:
- Taxable Costs for Production Database. Federal Circuit case law holds that costs associated with a third-party electronic database can constitute taxable costs. In re Ricoh Co., Ltd. Patent Litig., No. 2011-1199, 2011 U.S. App. LEXIS 23495, *6-8 (Fed. Cir. Nov. 23, 2011). The Court held that costs for electronic databases used in document production are taxable costs under 28 U.S.C. 1920(4). However, there are other factors that should be analyzed and considered by a party prior to and during discovery to support such costs being taxable.
Who Should Attend:
- IP and Related Attorneys
- Privacy and Data Security Attorneys
- Risk and Compliance Officers
- eDiscovery Attorneys
- Compliance and Risk Managers
- IT Lawyers
- Technology Firms and Others
- Other Related or Interested Professionals
Vincent has more than 45 years of extensive experience in civil litigation and alternative dispute resolution. He served as Special Master and as Special Master Liaison to the United States District Court for the District of Delaware from September 2004 to December 2011 in numerous intellectual property, antitrust and asbestos matters. He also serves as mediator in bankruptcy appeals to the District Court.
Vincent also serves as an arbitrator, mediator and neutral assessor for the Superior Court of Delaware, a mediator for the Delaware Court of Chancery as a mediator / arbitrator for Family Court and a mediator for the Delaware District Court and for the U.S. Bankruptcy Court in Delaware.
Vincent has more than 45 years of extensive experience in civil litigation and alternative dispute resolution. He served as Special …
Austen practices general business litigation with an emphasis on disputes involving intellectual property law, corporate law and commercial law. He represents businesses and individuals in matters involving breach of contract and disputes involving members of boards of directors and shareholders. He also serves as Delaware counsel to corporations in patent infringement cases in the District of Delaware.
Austen practices general business litigation with an emphasis on disputes involving intellectual property law, corporate law and commercial law. He …
Ann Fort, a member of Sutherland’s Intellectual Property Practice Group, protects the intellectual property rights of clients in the U.S. and abroad. Her experience encompasses patent infringement, licensing disputes, trade secret protection, and unfair competition, including trademark and copyright disputes. She represents both plaintiffs and defendants in competitor-focused patent litigation, and defends businesses facing claims by patent assertion entities. In connection with her litigation practice, Ann has been focusing on electronic discovery issues since the late 1990s, and has chaired the firm’s Electronic Discovery Committee. Ann focuses her practice on technology businesses and has handled cases involving financial institution software products, Internet-based information management systems, wireless data transmission systems, automated materials handling systems, ground fault circuit interrupters, power management unit chips, interactive television program guides, computer network security protection systems, and medical information systems.
Ann’s public service work includes serving as Co-Chair of the Federal Circuit Bar Association PTO Pro Bono Committee, as well as serving on the Southern Center For Human Rights board, and the boards of TurningPoint Breast Cancer Rehabilitation and the Women in Technology Foundation.
Ann Fort, a member of Sutherland’s Intellectual Property Practice Group, protects the intellectual property rights of clients in the U.S. …
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NASBA Field of Study:
Specialized Knowledge and Applications
NY Category of CLE Credit:
Areas of Professional Practice
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About Fox Rothschild LLP
Fox Rothschild LLP is a full-service national law firm that serves the needs of business and individuals. Over the past century, Fox has grown to more than 600 attorneys who practice in more than 50 practice areas in 20 offices from coast to coast. Our clients come to us because we understand their issues, their priorities and the way they think. We help clients manage risk and make better decisions by offering practical advice and innovative solutions. What sets Fox apart is our understanding of clients' situations and industries, as well as their need for practical and cost-effective advice. At Fox, we are as committed to your success as you are. Fox is experienced in patent litigation and e-discovery, diligently representing patentees and accused infringers in patent infringement cases and helping them balance full e-discovery compliance with proportionality and cost-effectiveness.
About Sutherland Asbill & Brennan LLP
Sutherland is an international legal service provider composed of associated legal practices that are separate entities, doing business in the U.S. as Sutherland Asbill & Brennan LLP and as Arbis Sutherland LLP in London and Geneva. More than 435 lawyers help the world’s largest companies, industry leaders, sector innovators and business entrepreneurs solve their biggest challenges and reach their business goals. Seven major practice areas—corporate, energy and environmental, financial services, intellectual property, litigation, real estate and tax—provide the framework for an extensive range of focus areas.