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Document Productions Patent Litigation

Patterson Belknap Webb & Tyler LLP

Show Me the Papers!: Judge Aaron Grants Motion to Compel Document Discovery from Third-Party

United States Magistrate Judge Stewart D. Aaron (S.D.N.Y.) recently granted a motion by Samsung Electronics Co. Ltd and Samsung Electronics America, Inc. (collectively “Samsung”) to compel non-party Microchip Technology...more

Wolf, Greenfield & Sacks, P.C.

Sued: What In-house Counsel Without Litigation Experience Need to Know - Preparing Your Inside Team

3: Preparing Your Inside Team - Preservation, Privilege, Potential Pitfalls -This is the third in a series of articles that explores considerations and suggested actions for in-house counsel who are inexperienced in patent...more

Fish & Richardson

Texas Patent Litigation Monthly Wrap-Up: October 2023

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The Texas Patent Litigation Monthly Wrap-Up for October 2023 covers three decisions addressing the scope of the work-product and attorney-client privileges, limits on the use of a defendant’s use of its own patents during...more

Patterson Belknap Webb & Tyler LLP

Judge Parker Finds GE’s Privileged Documents Show No Signs of Fraud in Medical Imaging Devices Misappropriation Case

On August 8, 2023, Judge Katharine H. Parker (S.D.N.Y.) denied Spectrum Dynamics Medical Limited’s (“Spectrum”) motion to compel the production of documents that it argued fell under the crime-fraud exception to the...more

Smart & Biggar

Federal Court dismisses motion to adjourn section 8 trial to complete document production from non-party generics

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As previously reported, the Federal Court found Janssen’s Canadian Patent No. 2,661,422 (422 patent)—which relates to treatment of prostate cancer in humans by co-administration of abiraterone acetate (Janssen’s ZYTIGA) and...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Awards Attorney Fees to the Defendant Following Dismissal of Lawsuit by Plaintiff

The Federal Circuit affirmed a district court award of over $360,000 in costs and attorneys’ fees against a non-practicing entity, citing the need “to deter future abusive litigation.” In October 2016, Blackbird sued...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Orders Production of Raw Data and Instructions Underlying Test Results

The Patent Trial and Appeal Board (PTAB) recently issued an Order that illustrates the circumstances in which a party may obtain additional discovery in an inter partes review (IPR). In Apple Inc. v. Singapore Asahi Chemical...more

Mintz - Intellectual Property Viewpoints

International Trade Commission ALJ Holds that Relying on Pre-Suit Testing Waives Privilege Protection

A recent order from International Trade Commission Administrative Law Judge Elliott provides helpful guidance regarding a common ITC discovery dispute: whether a party may withhold from discovery as work product pre-suit test...more

Akin Gump Strauss Hauer & Feld LLP

Dual-Purpose, Patent Analysis Documents Found Immune from Discovery under Work Product Doctrine

In Limestone Memory Systems LLC v. Micron Technology, Inc. et al., the Discovery Master ruled that, under 9th Circuit law, pre-suit, patent analysis documents qualified for immunity from discovery under the work product...more

Fox Rothschild LLP

Judge Andrews Finds Plaintiff Met Its Burden Of Establishing The Common Interest Privilege With Respect To Disputed Communications...

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By Memorandum Order entered by The Honorable Richard G. Andrews in TC Technology LLC v. Sprint Corp. et al., Civil Action 16-153-RGA (D.Del. December 13, 2018), the Court granted-in-part and denied-in-part defendants’ motion...more

Robins Kaplan LLP

The First Circuit Takes Sides in the Split on Burden of Proof in Section 1782 Applications

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The First Circuit recently joined the slight majority of its sister Circuits by holding that neither party bears the burden of proof with respect to the discretionary factors analyzed on an application for discovery in aid of...more

Orrick - Trade Secrets Group

In The Ninth Circuit, Your Fate (And Documents) May Not Be Sealed

Judge Vince Chhabria of the Northern District of California handed down a strongly worded order denying a motion to seal alleged trade secret information, and sanctioning counsel for defendant for the frivolous request. ...more

Fish & Richardson

Massachusetts Patent Litigation Wrap-Up – October 2017

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This post is part of a monthly series summarizing notable activity in patent litigation in the District of Massachusetts, including short summaries of substantive orders issued in pending cases. Ethicon sued Covidien...more

Morris James LLP

Discovery From Foreign Affiliate Is Denied

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Plaintiff seeks core technical documents regarding certain accused products that are in the possession of defendant’s foreign affiliates. He court finds that plaintiff has not demonstrated defendant’s control over the...more

Morris James LLP

Court Compels Production Of Core Technical Documents But Declines To Correct Claims In The Patents

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Fallon, M. J. Plaintiff’s motion to compel documents is granted in part and denied in part. Its motion to correct and amend its motion to compel is denied as moot. Its motion to amend its complaint is denied as moot. Its...more

McDermott Will & Emery

High Bar for Discovery Motions in IPR

Permobil Inc. v. Pridemobility Products Corp. - Addressing a patent owner's motion to compel a petitioner to produce documents concerning petitioner’s alleged copying in an inter partes review (IPR), the U.S. Patent...more

Robins Kaplan LLP

Conclusory statements about the relevance of foreign prosecution histories do not support motion to compel

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Defendant Ablexis requested that the court compel the production of documents associated with the prosecution of non-U.S. patent applications related to the patent-in-suit. The court said that a defendant’s statement that the...more

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