quinn emanuel urquhart & sullivan, llp | trial lawyers Los Angeles New York San Francisco Silicon Valley Chicago Washington, D.C. Tokyo London Mannheim Moscow Hamburg Paris CROSS-BORDER PATENT LITIGATION: U.S. LITIGATOR’S PERSPECTIVE Victoria F. Maroulis Quinn Emanuel

Practical Considerations  Coordination between multiple actions in different jurisdictions  Differing rules and practices  Use of foreign litigation developments in U.S. Courts  Availability of U.S.-style discovery in foreign litigations 1

Section 1782: U.S.-Style Discovery in Foreign Litigations  Minimum Statutory Requirements  Request by interested party  A foreign tribunal or person with an interest in the foreign proceeding  Request for document, thing, or testimony  To be used in a foreign proceeding  From someone that resides in the district  Further Discretionary Factors  Is the discovery sought available in the foreign proceeding?  Is the foreign proceeding taking place in a real tribunal?  Is the request just an end-run around the applicable rules?  Are the requests unduly intrusive or burdensome? 2

Unique Issues in 1782 Actions  Confidentiality issues  Documents governed by protective orders  Sealing procedure in the foreign tribunal  Discovery of documents located overseas  Foreign subsidiary might have the documents  Courts have been split  Question appears to be discretionary and based on “control”  Discoverability in the foreign tribunal  Courts have been split  Not considered a requirement now  Admissibility in the foreign proceeding  Courts have been split on this too  Admissibility not considered a requirement now 3