News & Analysis as of

Motion to Compel Patent Litigation

Akin Gump Strauss Hauer & Feld LLP

District Court: Common Interest May Protect Communications with Third Parties from Discovery, but Not Always

The District of Delaware recently denied in part a motion to compel production of documents and testimony between a patentee and potential investors, valuation firms and an international bank based on the common interest...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Denies Motion to Compel Discovery of Evidence from Parallel ITC Investigation Due to Lack of Inconsistency

The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent...more

Seyfarth Shaw LLP

Beyond the 100 Mile Rule: Court of Appeal Affirms District Court’s Power to Compel Attendance of Distant Witnesses and Unveil...

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What is the range of a federal district court’s power to compel a nonparty’s attendance at a hearing? Every practicing litigator knows the answer—“within 100 miles of where the person resides, is employed, or regularly...more

Fish & Richardson

Minnesota Patent Litigation Wrap-Up: Q3 2023

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This post continues our summary of substantive orders in patent litigation in the District of Minnesota. This summary includes a motion to compel production of chemical intermediates from an overseas manufacturer in...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

Goodwin

Regeneron Files Expedited Motion Challenging Mylan’s Designation of Entire aBLA Production as Outside Counsel’s Eyes Only

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On Tuesday, December 6, Regeneron filed an expedited motion to compel Mylan’s compliance with the protective order in the parties’ BPCIA litigation concerning Mylan’s proposed aflibercept biosimilar of EYLEA. Regeneron...more

Fish & Richardson

Minnesota Patent Litigation Wrap-Up - Q1 2022

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This post continues our summary of substantive orders in patent litigation in the District of Minnesota. This summary includes discovery relevant to willfulness findings, stays under the customer suit exception, and...more

Mintz - Intellectual Property Viewpoints

Prior Daubert Orders and Discovery Lessons Out of N.D. Cal.

A recent order from the Northern District of California in Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd., No. 19-cv-06593 (Jan. 27, 2022) (“Edwards”), provides guidance regarding the ability (or inability) to...more

McDermott Will & Emery

US Courts Can Compel Parties to Transfer Ownership of Foreign Patents

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Addressing a district court decision agreeing to transfer ownership of certain US patents, but declining to do likewise for the related foreign patents, the US Court of Appeals for the Federal Circuit explained that US courts...more

WilmerHale

CAFC Patent Cases - December 2020

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Precedential Federal Circuit Opinions - VIDSTREAM LLC v. TWITTER, INC. [OPINION] (2019-1734, 2019-1735, 11/25/2020) (Newman, O'Malley, Taranto) - Newman, J. Affirming the decisions of the Patent Trial and Appeal Board...more

Mintz - Intellectual Property Viewpoints

No Fishing Allowed: Discovery of Litigation Funding Requires Articulation of Relevance Beyond Speculation

A recent Memorandum Order from the District of Delaware edified the protections courts tend to give discovery concerning litigation funding. Because Defendant AT&T failed to carry its burden of demonstrating the specific...more

Harris Beach Murtha PLLC

Patent Infringement: Successful Litigation Stays the "Course"

What happens when your competitors infringe your patent for golf equipment – then declare bankruptcy to avoid paying up? In this episode, Harris Beach intellectual property (IP) attorneys share the story behind the $12...more

Jones Day

A Compelling Decision – Board Addresses Scope Of Work Product Protection

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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

Request for Letters Rogatory Denied Due to Tardiness and Likely Delay to Trial Date

Chief Judge Gilstrap of the Eastern District of Texas has denied a motion seeking foreign discovery from a third party pursuant to the Hague Convention, holding that the movant waited too long to seek such discovery. The...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

Fish & Richardson

Discovery Battles in AbbVie v. Boehringer Ingelheim

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The many discovery disputes between AbbVie and Boehringer Ingelheim (“BI”) over BI’s biosimilar of HUMIRA® (adalimumab) in the Delaware District Court are providing insight on the bounds of discovery in Biologics Price...more

Goodwin

Court Grants BI Motion to Compel Discovery in Adalimumab Litigation (Updated)

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On Monday, Magistrate Judge Lloret, who is visiting the U.S. District Court for the District of Delaware from the Eastern District of Pennsylvania, granted Boehringer Ingelheims’s (“BI’s”) motion to compel discovery relating...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

Jones Day

Speculation Insufficient To Justify Routine Discovery

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The PTAB has discretion to permit “routine discovery” under 37 C.F.R. §42.51(b)(1)(iii) when that discovery “is narrowly directed to specific information known to the responding party to be inconsistent with a position...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

Goodwin

Court Grants BI Motion to Compel Discovery in Adalimumab Litigation

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On Monday, Magistrate Judge Lloret, who is visiting the U.S. District Court for the District of Delaware from the Eastern District of Pennsylvania, granted Boehringer Ingelheims’s (“BI’s”) motion to compel discovery relating...more

Jones Day

ALJ Denies Inequitable Conduct “Fishing Expedition”

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In a recent order, Administrative Law Judge Lord denied Respondents CSL Behring LLC, CSL Behring GMBH, and CSL Behring Recombinant Facility AG (“CSL Behring”) motion to compel discovery from Complainants Bioverativ Inc.,...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

WilmerHale

Federal Circuit Patent Updates - September 2017

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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

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