Best Practices for eDiscovery in Patent Litigation 2016 NorCal eDiscovery & IG Retreat - July 18, 2016

Moderator: Jacqueline K. S. Lee, Partner, Jones Day Panelists: Lael Andara, Partner, Ropers Majeski Kohn Bentley PC Xavier Brandwajn, Senior Associate, Alston & Bird LLP David Dolkas, Partner, McDermott Will & Emery LLP Michael Quartararo, Director of Litigation Support Services, Stroock & Stroock & Lavan LLP

Hypothetical Plaintiff XSpot Technologies, Inc.: Three-person firm in Denver with satellite office in Plano, TX Assignee of ’567 Patent directed to sending data across Ethernet network In early 2000s, member of fledgling trade organization related to development of new proposed standard for sending data packets over network (organization disbanded and no standard was developed) During standard-setting meetings, XSpot reps disclosed ’567 Patent and belief that claims read broadly on sending data across Ethernet network XSpot developed and sold product practicing invention, more than year before filing date, but has since stopped selling products Characterizes self as “IP licensing” company

Hypothetical Lawsuit: XSpot files suit for infringement of ‘567 Patent against numerous defendants in various jurisdictions (E.D. Tex., D. Del., N.D. Cal., ITC, others) Complaint alleges that software running on defendants’ products infringes asserted claims Seeks damages, including enhanced damages for willful infringement Defendants assert affirmative defenses of anticipation, obviousness, and on-sale bar

PRESERVATION CONSIDERATIONS: LITIGATION HOLDS

SETTING THE PARAMETERS OF DISCOVERY

STRATEGIES FOR PLAINTIFFS/PATENTEES

STRATEGIES FOR DEFENDANTS/ACCUSED INFRINGERS

Questions?

Appendix

PATENT LAW § 285.  Attorney fees  The court in exceptional cases may award reasonable attorney fees to the prevailing party.

Octane Fitness v. Icon Health

Amended FRCP Speed up Case Management and Discovery process FRCP 4 (m) – reduces time limit for service to 60 days after filing FRCP 16 (b)(1) – requires parties input before issuing order (“active CMC”) FRCP 16 (b)(2) – requires scheduling order 90 service/60 appear FRCP 26 (d)(2)(A)(i) – discovery may start as early as 21 days after service FRCP 26 (d)(2)(B) – allows for early RFP, deemed served on date of 26 (f) conference Responsibility for Proportionality & Cost-Effective Discovery process FRCP 1 – directed to courts and parties FRCP 16 (b)(3)(B)(v) – allows scheduling order to require conference w/court prior to disc. motion FRCP 26 (b)(1) – requires discovery be proportional to needs of the case FRCP 26 (b)(2)(C) – allows for limiting discovery and use of 26 (b)(1) to limit scope FRCP 26 (b)(2)(C) – allows court to shift discovery costs FRCP 34 (b)(2)(C) – requires specificity in objection (NO BOILERPLATE) Focus on the need for Cooperation. FRCP 16 (b)(3)(B)(iii) – scheduling order may include preservation FRCP 16 (b)(3)(B)(iv) – scheduling order may include claw back FRE 502 FRCP 26 (d)(3) – allows parties to stipulate other discovery sequence Uniformity as to standard for spoliation sanctions FRCP 37(e) – standard of reasonableness in preservation with sanctions measured by harm

Oracle America Inc., v. Google