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Patents Work-Product Doctrine

Jenner & Block

Protecting Confidential Legal Information: A Handbook Analyzing Issues under the Attorney-Client Privilege and the Work Product...

Jenner & Block on

I. THE ATTORNEY-CLIENT PRIVILEGE - Historically, the attorney-client privilege developed upon two assumptions: (1) good legal assistance requires full disclosure of a client’s legal problems; and (2) a client will only ...more

Akin Gump Strauss Hauer & Feld LLP

Withholding Data That PTAB Would Deem Relevant to Patentability Supports Adverse Judgment in an IPR

The Patent Trial and Appeal Board (PTAB) granted Petitioner’s motions to sanction Patent Owner for failure to meet its duty of candor and fair dealing in five related inter partes review  proceedings. The PTAB found that...more

McCarter & English, LLP

Patent Office Cancels Patents for Inadequate Voluntary Disclosure in IPRs

Inter partes reviews (IPRs) are litigation-like procedures held before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office that are used to challenge the validity of patents. Typically,...more

Haug Partners LLP

Disclosure of Third-Party Funding Documents in Patent Litigation: A Shift Towards Greater Transparency in Patent Ownership and...

Haug Partners LLP on

Third-party litigation financing (TPLF) is an arrangement by which plaintiffs finance litigation costs through a non-party, typically a private firm that obtain funds from other investors. The commercial goal for a funder is...more

Jones Day

A Compelling Decision – Board Addresses Scope Of Work Product Protection

Jones Day on

In a series of IPR proceedings between Petitioner Adobe Inc. and Patent Owner RAH Color Technologies LLC, the Patent Trial and Appeal Board declined to extend attorney work product protection to deposition questions seeking...more

Akin Gump Strauss Hauer & Feld LLP

Prior Art That Was Considered but Not Relied Upon by an Expert is Fair Game for Discovery in IPRs

In inter partes review (IPR) proceedings of patents relating to printer technology, the Patent Trial and Appeal Board (PTAB) granted Patent Owner’s motion to compel testimony over Petitioner’s arguments that the information...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

Mintz - Intellectual Property Viewpoints

When Is Pre-Acquisition Analysis of Patents Protected from Discovery During Litigation?

A Discovery Master in Limestone Memory Systems LLC v. Micron Tech., Inc. pending in the Central District of California recently provided additional guidance to practitioners and patent owners on this important question. The...more

WilmerHale

Federal Circuit Patent Updates - September 2017

WilmerHale on

Jang v. Boston Scientific Corporation (No. 2016-1575, 9/29/17) (Prost, O'Malley, Chen) - Chen, J. Affirming denial of motion for JMOL, vacatur of verdict of infringement under the doctrine of equivalents, and judgment of...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In Allied v. OSMI, the Circuit affirms dismissal of a declaratory judgment action even though Allied’s Mexican distributors had been sued in Mexico on a corresponding Mexican patent. In a first Waymo v. Uber case, the panel...more

Fish & Richardson

Minnesota Patent Litigation Wrap-Up – May 2017

Fish & Richardson on

This post continues our monthly summary of patent litigation in the District of Minnesota, including short summaries of substantive orders issued in pending cases. In May, 2017, there were four notable substantive decisions...more

Knobbe Martens

4 Ways to Maximize the Value of Your IP Counsel

Knobbe Martens on

1.Considering Your IP Counsel as a Partner - Companies maximize the value of their IP counsel when both the company and IP counsel view their relationship as a partnership. More specifically, look for IP counsel that...more

McDermott Will & Emery

ANDA Update - Volume 2, Number 2

McDermott Will & Emery on

180-Day Notice Period for Biosimilar Approval Is Always Mandatory and Enforceable by Injunction - Amgen Inc., v. Apotex Inc., (Fed. Cir. July 5, 2016) - A year after analyzing the patent dance and notice...more

McGuireWoods LLP

Distinguishing Between "Facts" and Lawyers' "Opinions"

McGuireWoods LLP on

Although the attorney-client privilege does not protect historical facts, any facts "created" during or in anticipation of litigation can present a difficult analysis. In Gilead Sciences, Inc. v. Merck & Co., Case No....more

McDermott Will & Emery

AbbVie Documents Not Protected by Privilege in FTC Sham Litigation Suit - Federal Trade Commission v. AbbVie, Inc., (E.D. Penn....

McDermott Will & Emery on

The U.S. District Court for the Eastern District of Pennsylvania ordered AbbVie, Inc. and Besins Healthcare to produce unredacted documents to the Federal Trade Commission (FTC), because the documents were relevant to the...more

McDonnell Boehnen Hulbert & Berghoff LLP

MBHB Snippets: Review of Developments in Intellectual Property Law - Winter 2013 - Volume 11, Issue 1: Conducting Efficient Patent...

The costs associated with discovery, and particularly electronic document discovery, in patent litigation can be effectively controlled with upfront planning, preparation, and coordination between in­house and outside...more

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