Patent Litigation, Work-Product Doctrine, Discovery

To Be or Not to Be...Discoverable: Third-Party Litigation Funders

Venable LLP on 5/8/2025

Should California courts permit litigants to conduct discovery into litigation funding, namely whether a third party is funding their adversary’s litigation efforts?...more

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

Wolf, Greenfield & Sacks, P.C. on 5/15/2024

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

A Compelling Decision – Board Addresses Scope Of Work Product Protection

Jones Day on 1/28/2020

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

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

Akin Gump Strauss Hauer & Feld LLP on 12/27/2019

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

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

Mintz - Intellectual Property Viewpoints on 9/10/2019

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

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

Akin Gump Strauss Hauer & Feld LLP on 4/18/2019

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

Distinguishing Between "Facts" and Lawyers' "Opinions"

McGuireWoods LLP on 3/16/2016

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

Patent Litigation › Work-Product Doctrine › Discovery