Joint defense agreements in patent infringement cases 2029568 2
Upcoming SlideShare
Loading in...5
×
 

Joint defense agreements in patent infringement cases 2029568 2

on

  • 763 views

 

Statistics

Views

Total Views
763
Views on SlideShare
754
Embed Views
9

Actions

Likes
0
Downloads
3
Comments
0

2 Embeds 9

http://www.pattersonsheridan.com 8
http://pattersonsheridan.greatjakes.com 1

Accessibility

Categories

Upload Details

Uploaded via as Adobe PDF

Usage Rights

© All Rights Reserved

Report content

Flagged as inappropriate Flag as inappropriate
Flag as inappropriate

Select your reason for flagging this presentation as inappropriate.

Cancel
  • Full Name Full Name Comment goes here.
    Are you sure you want to
    Your message goes here
    Processing…
Post Comment
Edit your comment

Joint defense agreements in patent infringement cases 2029568 2 Joint defense agreements in patent infringement cases 2029568 2 Presentation Transcript

  • JOINT DEFENSE AGREEMENTS IN PATENT INFRINGEMENT CASES Jerry R. Selinger November 11, 2011 California  Texas  New Jersey  North Carolina
  • Terminology “Joint Defense” and “Common Interest” are the most commonly used terms and usually are used interchangeably Can describe various assemblies of attorneys and clients  Multiple clients with the same attorney  Multiple clients with different attorneys  Some combination of the two 2
  • Background Joint defenses in patent litigation have become common  Increase of multiple-defendant lawsuits filed by non- practicing entities (NPEs)  Mandated need to cooperate with co-defendants  Economics of many NPE cases (settlement value vs. cost through trial)  Pressure on in-house counsel to lower costs 3
  • Background New Joinder Rules (America Invents Act)  Will reduce number of multiple defendant lawsuits  Need/desirability of joint defense arrangements may remain when a plaintiff files multiple lawsuits asserting same patent(s) against multiple defendants  Claim construction  Invalidity  Some multiple-defendant cases always will be proper, e.g., defendants in privity such as manufacturers, distributors, & retailers 4
  • Joint Defense Privilege An exception to the rule that disclosure of privileged information to third parties waives privilege Establishing the privilege  Generally, lawsuit must have been threatened or filed  Group members claiming privilege are parties or potential parties with expectation of confidentiality  Sharing of privileged information furthers the common legal interest  No previous waiver of privilege 5
  • Joint Defense Agreements Joint Defense agreements may be implied or exist without a writing  but written agreements are best Oral agreements can be enforced, but are more susceptible to competing interpretations  And inevitably leave open nuance issues Written agreements leave less room for later disputes about terms, scope, and effect 6
  • Joint Defense Agreements Primary goal of joint defense groups  Share information and strategy without waiving privileges  Share costs/reduce expenses of defense Primary goal of joint defense agreements (JDAs)  Define the relationship  Preserve privileges  Avoid future conflicts issues  Avoid antitrust issues  Preserve ability to act independently when necessary  Anticipate and avoid logistical problems 7
  • Define the Relationship Describe the common interest(s) Disclaim attorney-client relationship between attorneys and other defendants Define cost-sharing arrangements  e.g., do five related defendants represented by the same attorney count as one or five for cost-sharing? Define permitted/prohibited uses of shared information Methods for adding and removal/withdrawal of group members 8
  • Preserve Privileges Agree that group members will maintain confidentiality  But that sharing confidential information cannot create future conflict Agree that sharing of information among group does not waive attorney-client, work product, or other privileges/immunities Agree that group members facing outside legal obligation/order to disclose will provide others with notice and opportunity to protect information 9
  • Preserve Privileges Agree there can be no unilateral waiver of group privileges Agree joint defense material will not be disclosed to opinion counsel and “reliance” witnesses, without express agreement Make sure parties added to the group later are bound by the same terms and obligations 10
  • Avoid Conflicts/Disqualification Issues Provision stating attorneys have performed all necessary conflicts checks Disclaimer of attorney-client relationships Use express prospective waivers  Each group member waives right to use participation in joint defense group as basis for disqualification in future cases Return or destroy confidential materials shared by other parties at end of litigation and no use outside the specific litigation 11
  • Avoid Conflicts/Disqualification Issues In re Shared Memory Graphics LLC, Fed. Cir., Misc. No. 978, 9/22/11 (2-1) Reversed district court and held waiver provision in JDA overrode conflict-of-interest concerns  “Nothing in this agreement . . . shall be used as a basis to seek to disqualify the respective counsel . . . In future litigation” 12
  • Avoid Conflicts/Disqualification Issues National Medical Enterprises, Inc. v. Godbey, 924 S.W.2d 123 (Tex. 1996)(orig. proceeding)  Shared confidences under written JDA with NME  Obligation to preserve confidences  Lawyer moved to another firm, withdrew from case  17 months later, others in lawfirm sued NME  Firm disqualified – lawyer could not honor his obligation of confidentiality under JDA and prosecute pending claims, so firm was disqualified 13
  • Avoid Antitrust Problems State group members have right to act independently in negotiating and settling There should be no agreement regarding terms under which license would be acceptable to group members Agreement should allow voluntary withdrawal from group Limit use/access of competitvely sensitive information 14
  • Preserve Independence Agreement should state that group participation does not limit members’ autonomy in defending the action Maintain right to initiate PTO review independently (often limited to independently discovered prior art) 15
  • Preserve Independence But make sure experts are retained by group or all group members (if key group member withdraws, the expert is still available) Include terms governing obligations of withdrawing parties that have taken the lead in particular joint defense projects  Make sure remaining group members are entitled to retain or take possession of all necessary materials 16
  • Other Logistical Issues Cost-sharing rules Case management – Some large groups use steering committees (I will never agree) Accommodations for non-U.S. parties Potential effects of foreign law if non-U.S. parties/counsel are involved 17
  • Beyond the Agreement Be a team player, but not at the expense of your client Be prepared to negotiate within the group Avoid unnecessary disagreements that destroy the “common interest” Consider who your co-defendants are in negotiating protective orders and information- sharing requirements 18
  • Thank You. 19