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

2. 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

3. 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

4. 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

5. PRESERVATION CONSIDERATIONS: LITIGATION HOLDS

6. SETTING THE PARAMETERS OF DISCOVERY

7. STRATEGIES FOR PLAINTIFFS/PATENTEES

8. STRATEGIES FOR DEFENDANTS/ACCUSED INFRINGERS

9. Questions?

10. Appendix

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

13. Octane Fitness v. Icon Health

14. 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

15. Oracle America Inc., v. Google