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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Patent

Date & Time
  • event Date

    Thursday, April 29, 2021

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide patent litigation counsel on discovery issues. The panel will examine proportionality requirements and considerations to determine if these requirements are met. The panel will discuss scope and timing of discovery, including patent holder and accused infringer requests for productions and experts. The panel will also examine recent court treatment and offer best practices for navigating discovery issues in patent litigation.

Faculty

Katherine D. Prescott
Principal
Fish & Richardson PC

Ms. Prescott’s practice focuses on patent and trade secret litigation with an emphasis on software, network and internet technologies. Ms. Prescott has experience before U.S. district courts nationwide and she has handled all aspects of litigation, including pre-suit investigations, complaint preparation, fact and expert discovery, claim construction, summary judgment hearings, mediations, trial, design around, injunction contingency planning, and appeal. Her experience also includes leading large joint defense groups, coordinating multi-jurisdictional litigation, and negotiating litigation settlements.

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Edward L. Tulin
Miscellaneous

Mr. Tulin concentrates his practice on complex litigation and arbitration involving patents, patent licensing disputes, copyrights, and trade secrets in the fields of biochemical processes, pharmaceutical products, medical devices, electrical engineering, semiconductors, computer engineering and software, mechanical engineering, environmental engineering and business methods. Mr. Tulin also has extensive experience with IP licensing and diligence matters, including patent portfolio analyses, freedom-to-operate opinions and contract drafting. In addition, Mr. Tulin is admitted to practice before the USPTO, where he has been involved with reexamination, interference and inter partes review proceedings, including multiple PTAB trials.

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Matthew D. Zapadka
Partner
Arnall Golden Gregory LLP

Mr. Zapadka counsels clients on the protection and enforcement of their intellectual property assets, with a focus on patent litigation. In this role, he advises on various intellectual property disputes in federal district court and state court, as well as trials at the USPTO Patent Trial and Appeal Board (PTAB). Mr. Zapadka also advises clients on patent prosecution matters, assisting companies ranging in size from start-ups to Fortune 500 companies. Additionally, he has experience litigating commercial disputes. Mr. Zapadka has worked with companies across a variety of sectors, including genetic technologies; biomolecular engineering, such as therapeutic and diagnostic molecules; prosthetics; pharmaceuticals; dietary supplements; cannabis/CBD; nuclear reactors; software; ultracapacitors; consumer products; genetic data visualization systems; and blockchain applications.

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Description

The Federal Rules of Civil Procedure require discovery to be relevant and proportional to case needs. The courts are to consider "the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit."

Counsel must understand the factors to consider when determining whether a given discovery request is proportional to the needs of the case, including the importance of an issue, the adequacy of alternative discovery measures, and the privacy concerns involved.

Listen as our authoritative panel of patent litigators examines discovery issues in patent litigation. The panel will examine proportionality requirements and considerations to determine if these requirements are met, including limited practical importance, other discovery, and privacy concerns. The panel will discuss the scope and timing of discovery and a patent holder and accused infringer RFPs. The panel will examine recent court treatment and will offer best practices for navigating proportionality requirements and other discovery issues in patent litigation.

Outline

  1. Proportionality requirements and considerations
  2. Scope
  3. Timing
  4. Requests for production
    1. Patent holder
    2. Accused infringer
  5. Experts
  6. Recent court treatment
  7. Best practices for navigating evidentiary issues in patent litigation

Benefits

The panel will review these and other priority issues:

  • What lessons can patent counsel draw from recent decisions when assessing evidence?
  • What best practices should counsel employ when submitting or challenging evidence?