The Intrusive Nature of Discovery in U.S. Patent Litigation

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1 The Intrusive Nature of Discovery in U.S. Patent Litigation October 16, 2014 Jeffrey R. Schaefer

2 All patent infringement litigation in the U.S. takes place in federal courts. Cases brought in federal district court are governed by the Federal Rules of Civil Procedure. Title V encompassing Rules is entitled, Disclosures and Discovery. Individual district courts have the ability to implement local rules. Some use this ability to implement special rules and orders such as special rules for the conduct of patent litigation.

3 What is discoverable? Parties may obtain discovery regarding any nonprivileged matter that is relevant to any parties claim or defense.

4 What is relevant? Discovery that appears reasonably calculated to lead to the discovery of admissible evidence. However, this widely-used language will be deleted if proposed revisions to the federal rules are adopted. New language would be: Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party s claim or defense and proportional to the needs of the case.

5 Who decides disputes? Generally, judges expect parties to iron out disputes during discovery. Discovery rulings during the course of a case are generally not appealable until the conclusion of the case. The Courts of Appeals generally afford trial court judges broad discretion upon review of discovery rulings

6 What sanctions are at risk for discovery failings? Motion to compel/contempt order Expenses and fees caused by the failure Dismissal/default judgment Adverse inference instruction FRCP Rule 37

7 What about inadvertent destruction of data? Safe Harbor no sanctions for failure to provide electronically stored information lost as a result of the routine, good-faith operation of an electronic information system. Has been interpreted differently in district courts negligence versus bad faith or intentional conduct Subject to revision in proposed rule changes

8 What are the forms of discovery? Disclosures (Rule 26(f)) Depositions (Rules 27-32) Subpoena to nonparty (Rule 45) Interrogatories (Rule 33) Request for Production (document requests) (Rule 34) Physical and Mental Examinations (Rule 35) Requests for Admissions (Rule 36)

9 Discovery of Electronically Stored Information (ESI) ESI includes writings, drawings, graphs, charts, photographs, sound recordings, images, and other data or data compilations stored in any medium from which information can be obtained either directly or, if necessary, after translation by the responding party into a reasonably usable form. FRCP Rule 24(a)(1)(A)

10 Discovery of Electronically Stored Information (ESI) A party need not provide discovery of electronically stored information from sources that the party identifies as not reasonably accessible because of undue burden or cost. FRCP Rule 26(b)(2)(B)

11 Summary of the report of the Judicial Conference Committee on Rules of Practice and Procedure September 20, 2014

12 Discovery of Electronically Stored Information (ESI) The explosion of ESI in recent years has affected all aspects of civil litigation. The explosion of ESI in recent years has presented new and unprecedented challenges in civil litigation. [T]he remarkable growth of ESI will continue and even accelerate.

13 Discovery of Electronically Stored Information (ESI) Significant amounts of ESI will be created and stored not only by sophisticated entities with large IT departments, but also by unsophisticated persons whose lives are recorded on their phones, tablets, cars, social media pages, and tools not even presently foreseen. Preservation of ESI is a major issue confronting parties in courts. The Committee has been credibly informed that persons and entities over-preserve ESI out of fear that some ESI might be lost.many entities described spending millions of dollars preserving ESI for litigation that may never be filed.

14 Case law in federal courts in the United States have established uniformly that a duty to preserve information, including ESI, arises when litigation is reasonably anticipated. -Report of the Judicial Conference Committee on Rules of Practice and Procedure

15 Data Privacy No broad U.S. data privacy protection Certain interests are protected (medical records, financial and credit records, social security numbers) No federal right to privacy in the workplace regarding communications such as , instant messaging, or telephone calls

16 Electronic Discovery in IP Cases May be more voluminous than other types of litigation May include special file types (e.g., drawing files and other file types created by technical software) Cross-border issues may exist