News & Analysis as of

Patent Infringement Attorney-Client Privilege

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

Ward and Smith, P.A.

Think Twice — Avoiding Waiver of the Attorney-Client Privilege Through Issuance of a Press Release

Ward and Smith, P.A. on

Imagine that your company has just been sued by a competitor for patent infringement, deceptive advertising, unfair competition, or any number of other business torts. The news of the lawsuit has been reported in various...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

Akin Gump Strauss Hauer & Feld LLP

Witness Testimony Regarding Intent to Infringe Excluded Because Defendant Refused Such Discovery Based on Privilege

The U.S. District Court for the District of Colorado granted a motion in limine to preclude testimony from corporate executives about their “business understanding” regarding infringement because the defendant previously...more

Akin Gump Strauss Hauer & Feld LLP

Common Interest Doctrine and Attorney-Client Privilege Protect Distributor’s Email Communication with Defendant

In a January 14, 2020, order, the Northern District of Illinois granted in part and denied in part, a plaintiff’s motion to compel the production of documents withheld as privileged. The court found that an email between the...more

Cozen O'Connor

Attorney-Client Privilege Can Protect Multi-Purpose Corporate Communications

Cozen O'Connor on

A question that has vexed corporate litigants is whether communications between counsel (be it in-house or outside counsel) and a corporation’s employees are protected from discovery under the attorney-client privilege if...more

McDermott Will & Emery

Intellectual Property Law Year in Review - March 2018

This year was a significant year for intellectual property cases at the Supreme Court level. In fact, the Supreme Court granted certiorari for seven patent cases, and decided five of these cases before the end of the year....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

Mintz - Intellectual Property Viewpoints

Federal Circuit Says PTO Submissions can Waive Privilege to Future Communications

On July 20, 2017, the United States Court of Appeals for the Federal Circuit in In re OptumInsight denied OptumInsight’s petition for writ of mandamus on privilege waiver. The court held that the District Court for the...more

Kilpatrick

Herding Cats: Making The Most Out Of A Joint Defense Group

Kilpatrick on

Litigation today often involves multiple defendants facing a common adversary — whether it is patent litigation against the same patent holder or tort litigation against the same plaintiff. Multidefendant litigation can...more

Proskauer - Minding Your Business

Key Lessons From the Recent Precedential Order by Federal Circuit – Jurisdiction, Mandamus, and Privilege

On November 17, 2016, the United States Court of Appeals for the Federal Circuit published a precedential order denying a petition for a writ of mandamus to overturn a district court’s determination. In In re: Rearden LLC,...more

Proskauer Rose LLP

The Renewed Importance of Opinions of Counsel in Patent Infringement Actions

Proskauer Rose LLP on

Several recent court decisions in patent infringement actions reflect the significant impact of the Supreme Court's ruling in Halo Electronics, Inc. v. Pulse Electronics, Inc., which dramatically altered the landscape for...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

Proskauer - Minding Your Business

Choice of Law Principles in Cross-Border Privilege Disputes: Whose Law Applies?

The Attorney-Client Privilege and Work Product Doctrine in the United States and Abroad - The attorney-client privilege and work product doctrine are important and well-known concepts to nearly every lawyer in the...more

Holland & Knight LLP

Federal Circuit Recognizes Privilege for Communications with Non-Lawyer Patent Agent

Holland & Knight LLP on

In a significant ruling, the U.S. Court of Appeals for the Federal Circuit has recognized a new privilege shielding communications between patent applicants and their non-lawyer patent agents. The issue was one of first...more

McGuireWoods LLP

Another Court Deals with Rule 30(b)(6) Depositions

McGuireWoods LLP on

Under Fed. R. Civ. P. 30(b)(6), corporations must designate a witness to testify about the corporation's knowledge. Surprisingly few courts have reconciled this requirement with the common if not universal role that lawyers...more

Mintz - Intellectual Property Viewpoints

The Federal Circuit Newly Recognizes Patent-Agent Privilege

On March 7, 2016, the Court of Appeals for the Federal Circuit recognized “a patent-agent privilege extending to communications with non-attorney patent agents when those agents are acting within the agent’s authorized...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

BakerHostetler

Federal Circuit Judge Bryson Denies Motion to Disqualify Plaintiff’s Counsel

BakerHostetler on

Providing a rare glimpse into a Federal Circuit judge’s views on the rules of professional conduct governing conflicts of interest, on February 26, 2016, Federal Circuit Judge William Bryson, sitting as a trial judge, denied...more

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