JOINT DEFENSE AGREEMENTS IN PATENT        INFRINGEMENT CASES                      Jerry R. Selinger                     No...
Terminology   “Joint Defense” and “Common Interest” are the    most commonly used terms and usually are    used interchan...
Background   Joint defenses in patent litigation have become    common       Increase of multiple-defendant lawsuits fil...
Background   New Joinder Rules (America Invents Act)       Will reduce number of multiple defendant lawsuits       Need...
Joint Defense Privilege An exception to the rule that disclosure of  privileged information to third parties waives  priv...
Joint Defense Agreements   Joint Defense agreements may be implied or    exist without a writing       but written agree...
Joint Defense Agreements   Primary goal of joint defense groups       Share information and strategy without waiving    ...
Define the Relationship Describe the common interest(s) Disclaim attorney-client relationship between  attorneys and oth...
Preserve Privileges   Agree that group members will maintain    confidentiality       But that sharing confidential info...
Preserve Privileges   Agree there can be no unilateral waiver of group    privileges   Agree joint defense material will...
Avoid Conflicts/Disqualification Issues Provision stating attorneys have performed all  necessary conflicts checks Discl...
Avoid Conflicts/Disqualification Issues In re Shared Memory Graphics LLC, Fed. Cir.,  Misc. No. 978, 9/22/11 (2-1) Rever...
Avoid Conflicts/Disqualification Issues   National Medical Enterprises, Inc. v. Godbey,    924 S.W.2d 123 (Tex. 1996)(ori...
Avoid Antitrust Problems State group members have right to act  independently in negotiating and settling There should b...
Preserve Independence   Agreement should state that group participation    does not limit members’ autonomy in defending ...
Preserve Independence   But make sure experts are retained by group or    all group members (if key group member    withd...
Other Logistical Issues   Cost-sharing rules   Case management – Some large groups use    steering committees (I will ne...
Beyond the Agreement Be a team player, but not at the expense of your  client Be prepared to negotiate within the group...
Thank You.             19
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Tennessee IPLA

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Tennessee IPLA

  1. 1. JOINT DEFENSE AGREEMENTS IN PATENT INFRINGEMENT CASES Jerry R. Selinger November 11, 2011 California  Texas  New Jersey  North Carolina
  2. 2. 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
  3. 3. 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
  4. 4. 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
  5. 5. 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
  6. 6. 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
  7. 7. 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
  8. 8. 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
  9. 9. 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
  10. 10. 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
  11. 11. 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
  12. 12. 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
  13. 13. 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
  14. 14. 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
  15. 15. 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
  16. 16. 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
  17. 17. 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
  18. 18. 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
  19. 19. Thank You. 19

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