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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

    Tuesday, January 18, 2022

  • 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 litigators on overcoming challenges when conducting discovery outside the U.S. The panel will examine national privacy and blocking laws that impede discovery outside the U.S. and how the courts treat the issue. The panel will discuss the international comity analysis, the Hague Evidence Convention, letters rogatory, and offer best practices for successfully conducting discovery.

Faculty

G. Brian Busey
Senior Of Counsel
Morrison Foerster

Mr. Busey’s practice focuses on complex intellectual property matters—particularly those before the U.S. International Trade Commission (ITC). He has litigated more than 50 section 337 cases before the ITC and has served as the president of the ITC’s Trial Lawyers Association. In addition to his active ITC practice, Mr. Busey has handled cross-border patent, trademark, and trade secret disputes in federal district court and before alternative dispute resolution tribunals. He also has counseled clients concerning intellectual property licensing issues and represented airports and airport proprietors in major administrative and court litigation.

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Samantha Jameson
Partner
Tensegrity Law Group, LLP

Ms. Jameson has patent litigation experience in U.S. district courts and the International Trade Commission and has participated in appeals to the United States Court of Appeals for the Federal Circuit. She has served such clients as Memory Technologies, Intellectual Ventures, and Skyhook Wireless. Ms. Jameson’s practice includes representing clients in disputes involving computer technology, mobile devices, computer peripherals, location services, and flash memory standards. 

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Description

U.S. district courts have taken different approaches when balancing the need for discovery from outside the U.S. against foreign privacy and blocking laws. For example, European companies may generally interpret the EU General Data Protection Regulation (GDPR) to call for redactions of personal information produced in U.S. litigation. Some European countries have also enacted national privacy laws that present an additional hurdle for U.S. litigators seeking to discover information from European companies.

U.S. courts apply a five-factor international comity analysis suggested by the Supreme Court in its seminal Societe Nationale Industrielle Aerospatiale v. U.S. District Court decision (1987) to determine if the foreign laws can prevent or impede discovery. Examples of these types of foreign laws are blocking, secrecy, or privacy laws that may limit U.S. discovery requests. The courts have applied these factors differently and also developed additional factors that are often considered under the comity analysis.

Since the Supreme Court’s Aerospatiale decision, most U.S. courts have allowed foreign discovery to proceed under the Federal Rules of Civil Procedure. However, some U.S. courts have ordered discovery through the Hague Evidence Convention. Because many European countries interpret the Hague Convention as binding, its procedures can work in tandem with and provide protection to those subject to the national privacy laws, and thus practitioners need to be familiar with its operation.

As U.S. courts continue to adapt to the evolving framework of international privacy laws, patent litigators need to understand the Hague Evidence Convention, letters rogatory, and other options (including particularly under the Federal Rules of Civil Procedure) for discovering relevant information from parties or non-parties to the suit outside the U.S.

Listen as our authoritative panel of patent attorneys examines the national privacy laws that make discovery a challenge outside the U.S. and how the courts treat the issue. The panel will discuss the international comity analysis and the Hague Evidence Convention, as well as offer best practices for successfully conducting discovery.

Outline

  1. National laws impeding discovery outside the U.S.
  2. Court treatment
  3. Discovery under the Hague Evidence Convention
  4. Best practices for discovery outside the U.S.

Benefits

The panel will review these and other key issues:

  • How have the courts addressed discovery of information from foreign companies?
  • How can litigators leverage the Hague Evidence Convention, letters rogatory, and the Federal Rules to conduct discovery of companies outside the U.S.?
  • What are the differences including timing between letters of request under the Hague Convention and letters rogatory?
  • What best practices should counsel employ when conducting discovery outside the U.S.?